An action in the circuit court by a patentee for breach of an
agreement of a licensee to make and sell the patented article and
to pay royalties, in which the validity and the infringement of the
patent are controverted, is a "case touching patent rights" of
which this Court has appellate jurisdiction under § 699 of the
Revised Statutes without regard to the sum or value in dispute.
Motion to dismiss for want of jurisdiction. The case is stated
in the opinion.
MR. JUSTICE GRAY delivered the opinion of the Court.
The original action was brought in the Circuit Court of the
United States for the District of Minnesota by a citizen of
Nebraska against a corporation of Minnesota for breach of an
agreement in writing, dated December 17, 1877, by which the
plaintiff granted to the defendant the right to make and sell
within a defined territory a certain kind of plow, under letters
patent granted August 18, 1874, to the plaintiff for an
Page 127 U. S. 377
improvement in plows (of which he alleged in his complaint that
he was the first and original inventor), and the defendant agreed
to make such plows in a good and workmanlike manner, and advertise
and sell them at a price not exceeding the price of similar
implements sold by other manufacturers, and to render accounts
semiannually, and pay the plaintiff a royalty of $2.50 for each
plow sold.
The defendant, in its answer, admitted the agreement sued on but
denied any breach, denied that the plaintiff was the original and
first inventor of any improvement in plows, and averred that his
alleged improvement had been described in six earlier patents
specified, admitted that the defendant had made and sold plows
according to the method described in letters patent granted March
9, 1880, to one Berthiaume, and averred that those plows were
constructed upon an entirely different principle from the
plaintiff's. The plaintiff filed a general replication denying the
allegations of the answer.
A jury trial having been duly waived in writing, the case was
tried by the court, which, upon facts set forth in detail, found
that the defendant had made 960 plows under the Berthiaume patent
and 350 other plows, that all those plows infringed the plaintiff's
patent, and that the plaintiff's invention was not anticipated by
either of the six other patent set up in the answer, and concluded
that the plaintiff was entitled to a royalty of $2.50 on each plow
sold by the defendant, amounting to $3,275, overruled a motion for
a new trial, and gave judgment for the plaintiff accordingly. 29 F.
790, 32 F. 290.
The defendant sued out this writ of error, which the original
plaintiff now moves to dismiss for want of jurisdiction because the
judgment below was for less than $5,000.
The decision of this motion depends upon § 699 of the Revised
Statutes, by which a writ of error or appeal may be allowed from
any final judgment or decree of the circuit court without regard to
the sum or value in dispute "in any case touching patent rights."
This section substantially reenacts the corresponding provision of
the patent act of 1870, in
Page 127 U. S. 378
which the words were "in any action, suit, controversy, or case
at law or in equity, touching patent rights." Act of July 8, 1870,
c. 230, § 56, 16 Stat. 207. The language applied to this subject in
the patent act of 1836, under which the cases of
Wilson v.
Sandford, 10 How. 99, and
Brown v.
Shannon, 20 How. 55, were decided, was that used in
that act in defining the jurisdiction of the circuit in patent
cases -- namely,
"actions, suits, controversies and cases, arising under any law
of the United States granting or confirming to inventors the
exclusive rights to their inventions or discoveries."
Act of July 4, 1836, c. 357, § 17, 5 Stat. 124. Similar words
were used in the Patent Act of 1861 in defining the jurisdiction of
this Court. Act of February 18, 1861, c. 37, 12 Stat. 130. But in
the act of 1870, as in the Revised Statutes, Congress, while using
similar language in defining the jurisdiction of the circuit court,
substituted (it must be supposed purposely) the new phrase
"touching patent rights" in defining the jurisdiction of this
Court.
The present case was an action upon a contract by which the
plaintiff licensed the defendant to make and sell a patented
article, and not a suit for infringing the plaintiff's patent. But
the questions whether that patent was valid and whether it had been
infringed were put in issue by the pleadings and decided by the
circuit court. Whether, within the meaning of other statutes and in
the light of previous decisions, this case should be considered as
"arising under" the patent laws of the United States is a question
not before us.
See Dale Tile Manufacturing Co. v. Hyatt,
125 U. S. 46, and
cases there cited. It is sufficient for the decision of this motion
that we have no doubt that a case in which the validity and the
infringement of a patent are controverted is a "case touching
patent rights," and therefore within the appellate jurisdiction of
this Court under § 699 of the Revised Statutes without regard to
the sum or value in dispute.
Motion to dismiss for want of jurisdiction denied.