Hartwell v. Tilghman - 99 U.S. 547 (1878)
U.S. Supreme Court
Hartwell v. Tilghman, 99 U.S. 547 (1878)
Hartwell v. Tilghman
99 U.S. 547
1. A suit between citizens of the same state cannot be sustained in the circuit court as arising under the patent laws of the United States where the defendant admits the validity and his use of the plaintiff's letters patent and a subsisting contract is shown governing the rights of the parties in the use of the invention.
2. Relief in such a suit is founded on the contract, and not on those laws.
The court below had no jurisdiction. The parties were all citizens of the same state. The suit was founded upon a contract between them, and did not arise under a statute of the United States. Wilson v. Sandford, 10 How. 99; Hartshorn v. Day, 19 How. 211; Slemmer's Appeal, 58 Pa.St. 164; Blanchard v. Sprague, 1 Cliff. 288; Goodyear v. Day, 1 Blatchf. 565; Merserole v. Union Paper Collar Co., 6 id. 356; Goodyear v. Union India Rubber Co., 4 id. 63; Burr v. Gregory, 2 Paine 426; Hill v. Whitcomb, 1 Holmes 317; Pulte v. Derby, 5 McLean 328; Curtis, Patents, sec. 496.
When the defendant's original use of a machine or a process for which letters patent have been granted to another is unlawful, he is prima facie an infringer, and the federal jurisdiction attaches to prevent a violation of a right secured by the laws of the United States. But where such use is lawful, he is prima facie not an infringer, and that jurisdiction does not attach. The rights involved rest solely upon contract, and it is only when a breach of it is shown that the continued exercise of them can be enjoined.