The seventeenth section of the act of 1536 gives the right of
appeal to this Court. when the sum in dispute is below the value of
two thousand dollars,
"in all actions, suits, controversies on cases arising under any
law of the United States, granting or confirming to inventors the
exclusive right to their inventions or discoveries,"
provided the court below shall deem it reasonable to allow the
appeal.
But a bill filed on the equity side of the circuit court to set
aside an assignments upon the ground that the assignee had not
complied with the terms of the contract is not one of these
enumerated cases, and the value in dispute being less than two
thousand dollars, this Court has no jurisdiction over the case.
The appellant had filed his bill in the court below setting
forth a patent to William Woodworth dated December 27, 1828, for a
planing machine, also an extension, in 1842, of said patent for
seven years, granted to William W. Woodworth, administrator of the
patentee, an assignment of all right and interest in said extended
patent throughout the United States except Vermont to complainant,
Wilson, and a license from Wilson to the defendants to use one
machine upon payment
Page 51 U. S. 100
of $1400, as follows,
viz., $250 in cash and the
remainder in nine, twelve, eighteen, and twenty-four months, for
which promissory notes were given, dated 23 April, 1845, one for
$150, and four for $250 each.
The license was made an exhibit in the case, which, after
setting forth the consideration of $1,400 above mentioned, and the
promissory notes for part thereof, contained the following
provision:
"And if said notes or either of them be not punctually paid upon
the maturity thereof, then all and singular the rights hereby
granted are to revert to the said Wilson, who shall be reinvested
in the same manner as if this license had not been made."
The first two of said notes were not paid when they fell due,
payment having been demanded and refused before the filing of the
bill. The bill further insisted that the license was forfeited by
the failure to pay the notes, and that the licensor was fully
reinvested at law and in equity with all his original rights. That
the defendants nevertheless were using the machine, and thus were
infringing the patent. Prayer for an injunction
pendente
lite, for an account of profits since the forfeiture of the
license, for a perpetual injunction, for a reinvestiture of title
in complainant, and for other and further relief.
The defendants demurred to the whole bill, and also, saving
their demurrer, answered the whole bill. They admitted all the
facts alleged and averred on their part that the contract set forth
in the bill had been modified and varied by a new contract, which
the complainant had broken, and that the respondent, being in the
lawful use of a planing machine at the expiration of the patent,
had the right to use such machine without license, and consequently
that the notes were without consideration.
There was a general replication, and the cause was heard first
on bill and demurrer, and afterwards the demurrer having been
overruled on bill, answer, and replication. Whereupon the bill was
dismissed with costs and an appeal to this Court taken.
MR. CHIEF JUSTICE TANEY delivered the opinion of the Court.
Page 51 U. S. 101
The object of the bill was to set aside a contract made by the
appellant with the appellees by which he had granted them
permission to use or vend to others to be used one of Woodworth's
planing machines in the Cities of New Orleans and Lafayette, and
also to obtain an injunction against the further use of the machine
upon the ground that it was an infringement of his patent rights.
The appellant states that he was the assignee of the monopoly in
that district of country, and that the contract which he had made
with the appellees had been forfeited by their refusal to comply
with its conditions. The license in question was sold for fourteen
hundred dollars, a part of which, the bill admits, had been paid.
The contract is exhibited with the bill, but it is not necessary in
this opinion to set out more particularly its provisions.
The appellees demurred to the bill, and at the final hearing the
demurrer was sustained and the bill dismissed. And the case is
brought here by an appeal from that decree.
The matter in controversy between the parties arises upon this
contract, and it does not appear that the sum in dispute exceeds
two thousand dollars. On the contrary, the bill and contract
exhibited with it show that it is below that sum. An appeal
therefore cannot be taken from the decree of the circuit court
unless it is authorized by the last clause in the seventeenth
section of the act of 1836.
The section referred to, after giving the right to a writ of
error or appeal in cases arising under that law, in the same manner
and under the same circumstances as provided by law in other cases,
adds the following provisions: "And in all other cases in which the
court shall deem it reasonable to allow the same." The words "in
all other cases" evidently refer to the description of cases
provided for in that section, and where the matter in dispute is
below two thousand dollars. In such suits, no appeal could be
allowed but for this provision.
The cases specified in the section in question are
"all actions, suits, controversies on cases arising under any
law of the United States granting or confirming to inventors the
exclusive right to their inventions or discoveries."
The right of appeal to this Court is confined to cases of this
description, when the sum in dispute is below two thousand dollars.
And the peculiar privilege given to this class of cases was
intended to secure uniformity of decision in the construction of
the act of Congress in relation to patents.
Now the dispute in this case does not arise under any act of
Congress, nor does the decision depend upon the construction of any
law in relation to patents. It arises out of the contract stated in
the bill, and there is no act of Congress providing
Page 51 U. S. 102
for or regulating contracts of this kind. The rights of the
parties depend altogether upon common law and equity principles.
The object of the bill is to have this contract set aside and
declared to be forfeited; and the prayer is "that the appellant's
reinvestiture of title to the license granted to the appellees, by
reason of the forfeiture of the contract, may be sanctioned by the
court," and for an injunction. But the injunction he asks for is to
be the consequence of the decree of the court sanctioning the
forfeiture. He alleges no ground for an injunction unless the
contract is set aside. And if the case made in the bill was a fit
one for relief in equity, it is very clear that whether the
contract ought to be declared forfeited or not in a court of
chancery depended altogether upon the rules and principles of
equity, and in no degree whatever upon any act of Congress
concerning patent rights. And whenever a contract is made in
relation to them which is not provided for and regulated by
Congress, the parties, if any dispute arises, stand upon the same
ground with other litigants as to the right of appeal, and the
decree of the circuit court cannot be revised here unless the
matter in dispute exceeds two thousand dollars.
This appeal, therefore, must be
Dismissed for want of jurisdiction.
Order
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the District of
Louisiana and was argued by counsel, on consideration whereof it is
now here ordered, adjudged, and decreed by this Court that this
cause be and the same is hereby dismissed for the want of
jurisdiction.