Where plaintiff relies upon infringement of his patent and
nothing else, the cause, whether good or bad, is one under the laws
of he United States, and the Circuit Court has jurisdiction, and
jurisdiction cannot be defeated by matter set up in the answer.
Page 228 U. S. 23
The party bringing the suit is master to decide what law he will
rely upon.
Jurisdiction is authority to decide either way, and, if it exits
as an incident to a federal statutory cause of action, it cannot be
defeated by a plea denying the merits.
Defendant, specially pleading to plaintiff's bill for
infringement of patent by selling below a stipulated price, denied
there was any infringement of the patent and set up that the cause
was not one arising under the patent laws of the United States, and
the federal court had no jurisdiction. The court overruled the plea
and, defendant not having answered further, made a decree for
plaintiff. In this Court,
held that the appeal was on the
question of jurisdiction alone, and as jurisdiction existed below
and rested solely on the patent law, there being no diverse
citizenship, the decree must be affirmed.
The facts are stated in the opinion.
MR. JUSTICE HOLMES delivered the opinion of the Court.
This is a bill in equity, brought by the appellee, an Illinois
corporation, against The Fair, also an Illinois corporation, for an
injunction against The Fair's making and vending certain patented
gas heating devices, or selling such devices of the plaintiff's
manufacture at less than $1.50 each, for an account, and for triple
damages. The bill alleges that the plaintiff has the sole and
exclusive right to make and sell the devices throughout the United
States, and that the defendant, with full notice, has sold and is
selling the same without license, in violation of the plaintiff's
right. It then goes on to allege that the plaintiff, when it sells,
imposes the condition that the goods shall not be sold at less than
$1.50, and attaches to the goods a notice to that
Page 228 U. S. 24
effect, and that any sale in violation of the condition, or use
of the article, if so sold, will be an infringement of the patent.
It further avers that the defendant obtained a stock of the devices
with notice of the conditions, and sold them for $1.25 each, in
infringement of the plaintiff's rights under the patent.
The Fair appeared specially and pleaded that all the devices in
question sold by it were purchased from the plaintiff by a jobber,
that the jobber paid the full price to the plaintiff, that, upon
these facts, there was no question arising under the patent or
other laws of the United States, and that the court had no
jurisdiction of the case. The case was set down for hearing on the
plea, so that the foregoing allegations of fact must be taken to be
true.
Farley v. Kittson, 120 U. S. 303,
120 U. S. 314.
The court, in deference to
Victor Talking Mach. Co. v. The
Fair, 123 F. 424, maintained its jurisdiction, and as the
defendant did not answer within the time allowed, took the bill as
confessed and made a decree for the plaintiff. The judge stated
that he did not feel at liberty to give a formal certificate, but
added what appears from the record, that the defendant did nothing
except to file the above plea. The appeal is upon the question of
jurisdiction alone. There is no uncertainty or ambiguity, and we
are of opinion that the case is properly here.
Petri v.
Creelman Lumber Co., 199 U. S. 487,
199 U. S.
492.
Obviously the plaintiff sued upon the patent law, so far as the
purport and intent of the bill is concerned. It was a resident of
the same state as the defendant, and could have had no other
ground. In the earlier paragraphs of the bill, it charged an
infringement of its patent rights in general terms, and it sought
triple damages, which it could have done only by virtue of the
statute. It is true that later it set up the sale at $1.25 as an
infringement, and that we may guess that this is the only one,
although it does not say so. But if that is the plaintiff's
Page 228 U. S. 25
only cause of action, still the plaintiff relies upon it as an
infringement, and nothing else, so that, good or bad, the cause of
action alleged is a cause of action under the laws of the United
States.
Of course, the party who brings a suit is master to decide what
law he will rely upon, and therefore does determine whether he will
bring a "suit arising under" the patent or other law of the United
States by his declaration or bill. That question cannot depend upon
the answer, and, accordingly, jurisdiction cannot be conferred by
the defense, even when anticipated and replied to in the bill.
Devine v. Los Angeles, 202 U. S. 313,
202 U. S. 334.
Conversely, when the plaintiff bases his cause of action upon an
act of Congress, jurisdiction cannot be defeated by a plea denying
the merits of the claim. It might be defeated, no doubt, in a case
depending on diversity of citizenship, by a plea to the citizenship
of parties.
Interior Construction & Improvement Co. v.
Gibney, 160 U. S. 217,
160 U. S. 219.
We are speaking of a case where jurisdiction is incident to a
federal statutory cause of action. Jurisdiction is authority to
decide the case either way. Unsuccessful as well as successful
suits may be brought upon the act, and a decision that a patent is
bad, whether on the facts or the law, is as binding as one that it
is good.
See Fauntleroy v. Lum, 210 U.
S. 230,
210 U. S. 235.
No doubt, if it should appear that the plaintiff was not really
relying upon the patent law for his alleged rights, or if the claim
of right were frivolous, the case might be dismissed. In the former
instance, the suit would not really and substantially involve a
controversy within the jurisdiction of the court,
Excelsior
Wooden Pipe Co. v. Pacific Bridge Co., 185 U.
S. 282,
185 U. S.
287-288, and, in the latter, the jurisdiction would not
be denied, except, possibly, in form.
Deming v. Carlisle
Packing Co., 226 U. S. 102,
226 U. S. 109.
But if the plaintiff really makes a substantial claim under an act
of Congress, there is jurisdiction whether the claim ultimately be
held good or bad.
Page 228 U. S. 26
Thus, in
Vicksburg Waterworks Co. v. Vicksburg,
185 U. S. 65,
185 U. S. 68, it
was pointed out that, while the certificate inquired whether a
federal question was involved upon the pleadings, and while the
counsel had argued the merits of the case, the function of this
Court
"is restricted to the inquiry whether, upon the allegations of
the bill of complaint, assuming them to be true in point of fact, a
federal question is disclosed so as to give the circuit court
jurisdiction in a suit between citizens of the same state."
For that reason, the court declined to pass upon the validity of
the contract the obligation of which was alleged to have been
impaired.
Id., 185 U. S. 82,
ibid., 202 U. S. 202 U.S.
453,
202 U. S. 458;
Mercantile Trust & Deposit Co. v. Columbus,
203 U. S. 311,
203 U. S.
322-323;
Knoxville Water Co. v. Knoxville,
200 U. S. 22,
200 U. S.
32.
In this case, the plea, though purporting to go to the
jurisdiction of the court, merely means that the patent law does
not give a patentee a right to impose such a condition as the
plaintiff attempted to impose upon second purchasers of the device.
The plaintiff no doubt maintains that the law does give him that
right, and that, even if the alleged infringements are confined to
the acts admitted by the plea, they are infringements nonetheless.
The bill hardly can be confined to that claim, but, if it were, it
is made in good faith and is not frivolous, it is a claim of right
under the patent law, and the circuit court properly took
jurisdiction of the case.
Excelsior Wooden Pipe Co. v. Pacific
Bridge Co., 185 U. S. 282,
185 U. S. 295;
White v. Rankin, 144 U. S. 628,
144 U. S.
635-636,
144 U. S.
639.
Decree affirmed.