St. Paul Plow Works v. Starling, 127 U.S. 376 (1888)

U.S. Supreme Court

St. Paul Plow Works v. Starling, 127 U.S. 376 (1888) St. Paul Plow Works v. Starling

No. 1367

Submitted May 4, 1888

Decided May 14, 1888

127 U.S. 376

ERROR TO THE CIRCUIT COURT OF THE UNITED

STATES FOR THE DISTRICT OF MINNESOTA

Syllabus

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.