This court has appellate jurisdiction over a judgment rendered
by a circuit court of appeals of the United States in a suit
brought by the United States in the Circuit Court of the Circuit,
to cancel a patent for an invention.
Where the appellate jurisdiction of this Court is described in a
statute in general terms so as to comprehend the particular case,
no presumption can be indulged of an intention to oust or to
restrict such jurisdiction, and any subsequent statute claimed to
have that effect must be examined in the light of the objects of
the enactment, the purposes it is to serve, and the mischiefs it is
to remedy, bearing in mind the role that the operation of such a
statute must be restrained within narrower limits than its words
import, if the court is satisfied that the literal meaning of its
language would extend to cases which the legislature never intended
to include in it.
Motion to dismiss for want of jurisdiction. The case is stated
in the opinion.
Page 159 U. S. 549
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
This is a suit by the United States to cancel a patent for an
invention granted to the American Bell Telephone Company, as
assignee of the inventor, Emile Berliner. On a hearing in the
circuit court, there was a finding and decree for the complainant.
65 F. 86. The cause having been taken to the Circuit Court of
Appeals for the First Circuit, the decree of the circuit court was
reversed, and it was ordered that the bill be dismissed. 68 F. 542.
From this decree an appeal was taken by the United States to this
Court, which appellees now move to dismiss
"for want of jurisdiction in this Court to entertain it under
the Circuit Court of Appeals Act of March 3, 1891, c. 517, section
6, 23 Stat. 826, 828, for the reason that the case is a case
arising under the patent laws."
The Supreme Court has appellate jurisdiction, under the
Constitution, in all cases to which the judicial power extends
(other than those in respect of which it has original
jurisdiction), "with such exceptions and under such regulations as
the Congress shall make." It was early held that, in the passage of
the Judiciary Act of 1789, Congress was executing the power of
making exceptions to the exercise of appellate jurisdiction, and
that the affirmative description of the cases to which the
appellate power extended was to be understood as implying a
negative on the exercise of such appellate power as was not
comprehended within it, but that, as this restriction rested on
implication founded on the manifest intent of the legislature, it
could be sustained only when that manifest intent appeared.
Durousseau v. United
States, 6 Cranch 307.
Where the appellate jurisdiction is described in general terms,
so as to comprehend the particular case, no presumption can be
indulged of an intention to oust or to restrict such jurisdiction,
and any statute claimed to have that effect must be examined in the
light of the objects of the enactment, the purposes it is to serve
and the mischiefs it is to remedy, bearing in mind the rule that
the operation of such a statute must be restrained within narrower
limits than its words
Page 159 U. S. 550
import, if the court is satisfied that the literal meaning of
its language would extend to cases which the legislature never
intended to include in it.
Petri v. Commercial National Bank of
Chicago, 142 U. S. 644,
142 U. S. 650;
Brewer's Lessee v.
Blougher, 14 Pet. 178;
Ceiche v.
Smythe, 13 Wall. 162,
80 U. S. 164;
Market Company v. Hoffman, 101 U.
S. 112.
We inquire, then, whether the appellate jurisdiction of this
Court over controversies to which the United States are parties has
been circumscribed by Congress in respect to the right of
appeal.
By section 629 of the Revised Statutes, original jurisdiction
was conferred upon the circuit courts (with a limitation as to the
value of the matter in dispute) of all suits in equity and all
suits at common law where the United States are petitioners or
plaintiffs, all suits at law or in equity arising under any act
providing for revenue from imports or tonnage, all causes arising
under any law providing internal revenue, all causes arising under
the postal laws, and all suits at law or in equity arising under
the patent or copyright laws of the United States. By the fifth
paragraph of section 711, the jurisdiction of the courts of the
United States of all cases "arising under the patent right or
copyright laws of the United States" was declared to be
exclusive.
By the Act of March 3, 1875, c. 137, 18 Stat. 470, it was
provided:
"The circuit courts of the United States shall have original
cognizance, concurrent with the courts of the several states, of
all suits of a civil nature at common law or in equity where the
matter in dispute exceeds, exclusive of costs, the sum or value of
five hundred dollars, and arising under the Constitution or laws of
the United States, or treaties made, or which shall be made, under
their authority, or in which the United States are plaintiffs or
petitioners."
And this was repeated in substance (the differences being
immaterial here) in the Acts of March 3, 1887, c. 373, 24 Stat.
552, and August 13, 1888, c. 866, 25 Stat. 433.
And this Court had appellate jurisdiction over all final
judgments and decrees of any circuit court, or of any district
court acting as a circuit court, in civil actions
Page 159 U. S. 551
where the matter in dispute exceeded the sum or value of $5,000.
Rev.Stat. ยงยง 690-692; 18 Stat. 315.
The primary object of the Act of March 3, 1891, c. 517, as
stated in
American Construction Company v. Jacksonville Railway
Company, 148 U. S. 372,
148 U. S.
382,
"well known as a matter of public history, manifest on the face
of the act, and judicially declared in the leading cases under it,
was to relieve this Court of the overburden of cases and
controversies arising from the rapid growth of the country, and the
steady increase of litigation, and, for the accomplishment of this
object, to transfer a large part of its appellate jurisdiction to
the circuit courts of appeals thereby established in each judicial
circuit, and to distribute between this Court and those, according
to the scheme of the act, the entire appellate jurisdiction from
the circuit and district courts of the United States."
By section five of this act, appeals or writs of error may be
taken from the circuit court directly to this Court in six
specified classes of cases: where the jurisdiction of the court
below is in issue; in prize causes; in cases of convictions of
capital or otherwise infamous crimes; in cases involving the
construction or application of the Constitution of the United
States; in cases in which the constitutionality of any law of the
United States, or the validity or construction of any treaty made
under its authority, is drawn in question; in cases where the
Constitution or law of a state is claimed to be in contravention of
the Constitution of the United States. Cases in which the United
States are plaintiffs or petitioners are not enumerated as falling
within either of these classes, nor are cases involving merely the
construction of a law of the United States, those ordinarily
arising under the heads of jurisdiction in respect of subjects
matter treated of in the sixth section.
By the sixth section, it is provided that the circuit courts of
appeals shall have appellate jurisdiction "in all cases other than
those provided for in the preceding section of this act, unless
otherwise provided by law." The circuit courts of appeals therefore
have appellate jurisdiction of all cases in which
Page 159 U. S. 552
original jurisdiction is conferred on the circuit courts by
reason of the United States being plaintiffs or petitioners. It is
further provided by that section that
"the judgments or decrees of the circuit courts of appeals shall
be final in all cases in which the jurisdiction is dependent
entirely upon the opposite parties to the suit or controversy,
being aliens and citizens of the United States or citizens of
different states; also in all cases arising under the patent laws,
under the revenue laws, and under the criminal laws and in
admiralty cases."
And the last paragraph of the section provides that
"in all cases not hereinbefore, in this section, made final,
there shall be of right an appeal or writ of error or review of the
case by the Supreme Court of the United States where the matter in
controversy shall exceed one thousand dollars besides costs."
Judgments or decrees in cases in which the ground of
jurisdiction of the circuit court is that the United States are
plaintiffs or petitioners are not made final in terms, and such
cases would fall within the last paragraph unless restricted by the
previous enumeration. And the contention is that the words, "cases
arising under the patent laws" must be held to operate as such
restriction, and to render the judgments and decrees of the circuit
courts of appeals final notwithstanding the existence of another
distinct ground of jurisdiction in the circuit court, and that
there would consequently be a right of appeal from a decree of a
circuit court of appeals dismissing a bill by the United States to
cancel a patent for land, but none where the bill is one to repeal
an invention patent.
In
United States v. Telephone Company, 128 U.
S. 315,
128 U. S. 359,
we said:
"In the present case, the United States are plaintiffs, and the
bill asserts that the suit is one of a civil nature, and of
equitable cognizance, and manifestly, if it presents a good cause
of action, it arises under the laws and Constitution of the United
States. It is therefore within the language both of the
Constitution and of the statute conferring jurisdiction on the
circuit courts."
Two grounds to support the jurisdiction were thus indicated, but
the question there was whether the judicial power of the United
States under the Constitution extended to a suit by the United
States to repeal a patent, and in that view
Page 159 U. S. 553
it was held that such a suit was a case arising under the laws
of the United States, as had been previously adjudged many times by
the Court. In the language of appellees' counsel,
"the judgments in the great contests reported in Cranch and
Wheaton established that these words embraced, and therefore
carried the judicial power to, every case wherein the existence or
extent of a right purporting to be given by federal authority, and
claimed by either party, became an essential ingredient."
Nevertheless, in respect of removals of suits from the state
courts to the circuit courts under the Acts of March 3, 1887, and
August 13, 1888, we held, upon what was deemed the true
construction of the statutes, that the right of removal was limited
to cases in which it appeared from the plaintiff's statement of his
own claim that his cause of action was one arising under the
Constitution or laws of the United States.
Tennessee v. Union
& Planters' Bank, 152 U. S. 454;
Chappell v. Waterworth, 155 U. S. 102.
In
Colorado Mining Company v. Turck, 150 U.
S. 138, it was ruled that when the original jurisdiction
of a circuit court is invoked upon the sole ground that the
determination of the question depends upon some question of a
federal nature, it must appear at the outset from the pleadings
that the suit is one of that character of which the circuit court
could properly take cognizance at the time its jurisdiction was
invoked, and that where the jurisdiction was invoked solely on the
ground of diverse citizenship, the judgment of the circuit court of
appeals was final, although another ground for jurisdiction in the
circuit court might be developed in the course of subsequent
proceedings in the case. How the case might be if the plaintiff had
invoked jurisdiction on two distinct grounds, one of them being
independent of diverse citizenship, was not determined. Nor is it
necessary to pass upon that question in this instance, for the
motion may be disposed of upon the inquiry whether it was
manifestly the intention of Congress to include such a case as that
before us in the words "arising under the patent laws." Now actions
at law for infringement, and suits in equity for infringement, for
interference, and to obtain
Page 159 U. S. 554
patents, are suits which clearly arise under the patent laws,
being brought for the purpose of vindicating rights created by
those laws, and coming strictly within the avowed purpose of the
act, to relieve this Court of that burden of litigation which
operated to impede the disposition of cases of peculiar gravity and
general importance. We are of opinion that it is reasonable to
assume that the attention of Congress was directed to this class of
cases, and that the language was used as applicable only to them,
and that there is nothing in the objects sought to be attained and
the mischiefs sought to be remedied by the act which furnishes
foundation for the belief that Congress manifestly intended to
place a limitation on the appellate jurisdiction of this Court in a
case such at this.
Moreover, in those cases, the subject matter is everything in
respect of jurisdiction, and the character of the parties nothing,
while here the character in which the plaintiffs sue and the nature
of the case are inseparably blended.
In instituting this suit, the government appeared on behalf of
the public, and, as it were, in the exercise of the beneficent
function of superintending authority over the public interests, and
the rule of construction in such cases is properly regarded as
affected by considerations of public policy. It is upon the
principle of public policy that the United States have been held
not bound by statutes of limitation unless Congress has clearly
manifested that they should be so bound.
United States v.
Nashville &c. Railway, 118 U. S. 120,
118 U. S. 125;
Stanley v. Schwalby, 147 U. S. 508. And
the same rule is applicable to the exercise of the prerogative of
parens patriae inherent in the supreme power of every
state, in respect of which it was observed by Mr. Justice Strong in
Savings Bank v. United
States, 19 Wall. 227,
86 U. S. 237,
that so much of the royal prerogative as belonged to the King in
his position as universal trustee enters as much into the
principles of our state as it does into the principles of the
British government. Hence, it was held in
United States v.
Beebe, 127 U. S. 338,
that the United States are not bound by any statute of limitations,
nor barred by laches of their officers, in a suit brought by them
as sovereign to enforce a public right or to assert a public
interest.
Page 159 U. S. 555
In
United States v. Telephone Company, supra, it was
decided that where a patent for a grant of any kind issued by the
United States has been obtained by fraud, by mistake, or by
accident, a suit by the United States against the patentee is the
proper remedy for relief, and that in this country, where there is
no kingly prerogative, but where patents for land and inventions
are issued by the authority of the government and by officers
appointed for that purpose, who may have been imposed upon the
fraud or deceit or may have erred as to their power or made
mistakes in the instrument itself, the appropriate remedy is by
proceedings by the United States against the patentee.
We cannot impute to Congress the intention of narrowing the
appellate jurisdiction of this Court in a suit brought by the
United States as a sovereign in respect of alleged miscarriage in
the exercise of one of its functions as such, deeply concerning the
public interests and not falling within the reason of the
limitations of the act.
Motion denied.
MR. JUSTICE GRAY took no part in the consideration and
disposition of this motion.