Where a bill is filed to enforce the specific execution of a
contract in relation to the use of a patent right, this Court has
no appellate jurisdiction, unless the matter in controversy exceeds
two thousand dollars.
The jurisdiction, where the bill is founded upon a contract,
differs materially from the jurisdiction on a bill to prevent the
infringement of the monopoly of the patentee, or of those claiming
under him by legal assignments, and to protect them in their rights
to the exclusive use.
The penalty of the bond taken, when an injunction is awarded, is
no evidence of the amount or value in dispute.
The case is stated in the opinion of the Court.
MR. CHIEF JUSTICE TANEY delivered the opinion of the Court.
The bill was filed by Joseph P. Shannon & Company, Gelston
& Matthews, Lapouraille & Maughlin, and Griffiss &
Cate, who composed four different partnership firms in the City of
Baltimore, separately engaged in the business of planing, who all
joined in the bill of complaint against Brown, the appellant,
praying that he might be enjoined from the use of certain planing
machines, mentioned in the bill, in the City of Baltimore. Upon the
hearing, a perpetual injunction was granted accordingly, and from
that decree this appeal was taken.
From the manner in which the bill is framed, there is some
Page 61 U. S. 56
difficulty in determining whether the complainants are seeking
the aid of this Court to prohibit the infringement of a patent
right assigned to them, or to enforce the specific execution of two
contracts with the appellant, exhibited with the bill; for the
right claimed under the patent, and the right claimed under the
contracts, are so mingled together in the statements and
allegations of the complainants as to leave some doubt upon that
point. And the first question, therefore, for this Court to
determine, is, upon which of these two grounds does the bill seek
for relief? The jurisdiction of the circuit court in the one case
is materially different from its jurisdiction in the other; and,
while this Court can exercise no appellate power in a case arising
under contracts like those exhibited, unless the amount or value of
the matter in controversy exceeds two thousand dollars, it may yet
lawfully exercise its appellate jurisdiction when a far less amount
is in dispute, if the party is proceeding either at law or in
equity for the infringement of a patent right to which he claims to
be entitled. Upon looking, however, carefully into the bill, we
think it must be regarded and treated as a proceeding to enforce
the specific execution of the contracts referred to, and not as one
to protect the complainants in the exclusive enjoyment of a patent
right. It states that three of the partnership firms named as
complainants -- that is to say, Joseph P. Shannon & Company,
Gelston & Matthews, and Lapouraille & Maughlin -- were, by
regular assignments, entitled to the exclusive use of Woodworth's
planing machine in the State of Maryland, east of the Blue Ridge.
That the appellant had used these machines in the City of
Baltimore, without any right derived from the patentee, and that,
in consequence of this infringement of their rights, various suits
and controversies had taken place between them and Brown, who
claimed the right to use the machines in question, as the assignee
of a patent of Emmons. The bill then proceeds to state that, in
order to put an end to these controversies and suits, these
appellees, and the appellant, entered into the contract of the 19th
of January, 1853, which is exhibited with the bill.
By this contract, the portion of the appellees of which we are
now speaking, and the appellant, agreed that each of the said three
partnership firms and the appellant should have the right to use
the Woodworth patent at one establishment, anywhere within the
territorial limits above mentioned, not exceeding five machines at
such establishment, and that each of the said parties should also
have the right to use Emmons' patent.
Page 61 U. S. 57
There are other stipulations in this agreement which it is not
material to state for the purposes of this opinion.
The bill further states that Brown afterwards, on the 15th of
June, 1853, assigned to Griffiss & Cate, the other complainant,
all his right to use the Woodworth patent, which right he had
derived from the contract before mentioned; and also the right to
use the Emmons patent, the right to which he had derived from the
administrator of Emmons. This contract states that the assignment
was made in consideration of fifteen hundred dollars, paid the
appellant by Griffiss & Cate. And the complainants allege that,
after this assignment, Brown continued to use the said five
machines in his establishment in Baltimore, although he had no
right to do so, as they were all Woodworth's planing machines; and
that he is not only a wrongdoer in using a patented invention
without a license, and as such liable to be restrained by a court
of equity, but that such use is a fraud upon the parties to each of
the two contracts into which he had entered, as above stated. That
the object of the contract of January 19, 1853, was to restrain the
use of the Woodworth machine and the Emmons machine, so far as that
right was to be used, to four establishments in the City of
Baltimore, with the limited number of machines in each; and that
the use of them by Brown, after he had substituted Griffiss &
Cate, in his place, was a fraud upon this contract, from the
binding operation of which he could not withdraw himself, and a
fraud also upon his contract with Griffiss & Cate. And the
gravamen of the bill, and the ground upon which relief is sought,
is summed up in the paragraph immediately preceding the prayer for
relief, in the following words:
"And your orators are further advised, that the misconduct of
the said Brown in the premises is a fraud upon the parties to the
agreement of the 19th of January, 1853, as well as upon the parties
to the agreement of the 15th of June, 1853, which it is the
peculiar province of a court of equity to restrain."
It is to prevent the fraudulent violation of these contracts,
therefore, that the complainants seek the aid of the court, and ask
for an injunction, and it being a proceeding founded on a contract
between the parties, this Court has no appellate power unless the
matter in controversy is of the value on more than two thousand
dollars. Now the matter in controversy is the right of the
appellants to use these five machines while the Woodworth patent
continued -- that is, until the 29th of December, 1856.
But it appears by the record that Brown sold this right to
Page 61 U. S. 58
Griffiss & Cate for $1,500. He admits, in his answer, that
he sold and assigned it for that sum; nor does he suggest that it
was worth more. The establishment of Griffiss & Cate, like that
of the appellant, was in the City of Baltimore. And if $1,500 was
the just value of the right in controversy on the 15th of June,
1853, there is no reason for supposing that it was more on the 10th
of October in that year, when this bill was filed, or at any time
since; on the contrary, the period for the duration of the right
under the contract was daily diminishing as the termination of the
patent was approaching, and a diminution on the value of the right
would be a natural and necessary consequence. It is evident,
therefore, that the value of the matter in controversy is not
sufficient to give appellate jurisdiction to this Court.
It has, however, been suggested in the argument at the bar that
the value may be estimated by referring to the penalty of the bond
taken by the circuit court when the injunction was granted. But
this rule would be entirely too vague and uncertain for judicial
purposes. It is the practice of all courts, in taking bonds of this
description, to prescribe a penalty more than enough to cover all
possible damages which the respondent may sustain by reason of the
injunction. There was nothing before the circuit court when the
penalty in this case was prescribed but the bill of the
complainants. And although the bill disclosed a controversy where
the matter in dispute was worth in the market but $1,500, yet when
the answer came in and testimony was taken, it might show that the
matter in dispute was of far greater value. The court could not
foresee whether this would be the case or not, and hence the
necessity and propriety of prescribing a penalty that would cover
all possible contingencies. The respondent, however, as we have
said, admits that he sold the privilege now in dispute for the sum
mentioned in the bill, and does not say that it was worth more or
was of greater value in his hands than in those of Griffiss &
Cate. The sum mentioned in the bill, and for which the privilege in
question was sold by the appellant, must therefore be taken as the
true value of the matter in controversy, and being less than
$2,000, whatever errors may be apparent in the proceedings and
decree of the court below, we have yet no power under the act of
Congress to revise and correct them, and the appeal must be
Dismissed for want of jurisdiction in this Court.