As a claim of invention, made in an application for a patent, is
a right incapable of being ascertained and valued in money, no
appeal lies to this court from a judgment of the Court of Appeals
for the District of Columbia, affirming the decision of the Supreme
Court of the District that the applicant was not entitled to a
decree, under Rev. Stat. § 4915, authorizing the Commissioner
of Patents to issue a patent to him for his alleged invention.
This was a bill brought by Caleb W. Durham, under the provisions
of section 4915 of the Revised Statutes, in the Supreme Court of
the District of Columbia, to obtain a decree authorizing the
Commissioner of Patents to issue a patent to him for an improved
drainage apparatus for buildings. The supreme court adjudged on the
evidence that Durham was not entitled to a decree, and dismissed
the bill, whereupon he carried the case by appeal to the Court of
Appeals for the District of Columbia, and that court affirmed the
decision of the court below. From this decree an appeal was taken
to this Court and a motion was made to dismiss the appeal for want
of jurisdiction.
Section 4915 is as follows:
"Whenever a patent on application is refused either by the
Commissioner of Patents or by the Supreme Court of the District of
Columbia upon appeal from the commissioner, the applicant may have
remedy by bill in equity, and the court having cognizance thereof,
on notice to adverse parties and other due proceedings had, may
adjudge that such applicant is entitled, according to law, to
receive a patent for his invention, as specified in his claim, or
for any part thereof, as the facts in the case may appear. And such
adjudication, if it be in favor of the right of the applicant,
shall authorize the commissioner to issue such patent on the
applicant filing in the Patent Office a copy of the adjudication,
and otherwise complying with the requirements
Page 161 U. S. 236
of law. In all cases where there is no opposing party, a copy of
the bill shall be served on the commissioner, and all the expenses
of the proceeding shall be paid by the applicant, whether the final
decision is in his favor or not."
Section 8 of the act establishing the Court of Appeals of the
District of Columbia, and for other purposes, approved February 9,
1893, 27 Stat. 434, c. 74, provides:
"SEC. 8. That any final judgment or decree of the said Court of
Appeals may be reexamined and affirmed, reversed, or modified by
the Supreme Court of the United States upon writ of error or appeal
in all causes in which the matter in dispute, exclusive of costs,
shall exceed the sum of five thousand dollars, in the same manner
and under the same regulations as heretofore provided for in cases
of writs of error on judgments or appeals from decrees rendered in
the Supreme Court of the District of Columbia, and also in cases,
without regard to the sum or value of the matter in dispute,
wherein is involved the validity of any patent or copyright, or in
which is drawn in question the validity of a treaty or statute of
or an authority exercised under the United States."
The Act of March 3, 1885, 23 Stat. 443, c. 355, reads thus:
"That no appeal or writ of error shall hereafter be allowed from
any judgment or decree in any suit at law or in equity in the
Supreme Court of the District of Columbia or in the Supreme Court
of any of the territories of the United States unless the matter in
dispute, exclusive of costs, shall exceed the sum of five thousand
dollars."
"SEC. 2. That the preceding section shall not apply to any case
wherein is involved the validity of any patent or copyright or in
which is drawn in question the validity of a treaty or statute of
or an authority exercised under the United States; but in all such
cases an appeal or writ of error may be brought without regard to
the sum or value in dispute. "
Page 161 U. S. 237
MR. CHIEF JUSTICE FULLER, after stating the facts in the
foregoing language, delivered the opinion of the Court.
Appeals to this Court from the Court of Appeals of the District
of Columbia are governed by section 8 of the Act of February 9,
1893. It is essential to our jurisdiction that it should appear
that the matter in dispute in the courts below was money to an
amount exceeding five thousand dollars, exclusive of costs, or some
right, the value of which could be ascertained in money and
exceeded that sum, or that the validity of a patent or copyright
was involved, or that the validity of a treaty or statute of or an
authority exercised under the United States was drawn in question.
South Carolina v. Seymour, 153 U.
S. 353, and cases cited.
The question here was whether Durham was "entitled, according to
law, to receive a patent for his invention, as specified in his
claim, or for any part thereof, as the facts in the case may
appear." What Durham sought was to obtain an adjudication
authorizing the Commissioner of Patents to issue a patent to him,
and the matter in dispute was whether Durham was entitled to a
patent as for a patentable invention.
Durham had presented his application for a patent, filed in due
form, to the Commissioner of Patents in accordance with section
4888 of the Revised Statutes, which application was rejected by the
commissioner, and thereupon he appealed to the Supreme Court of the
District of Columbia in general term, which affirmed the decision
of the commissioner. He then filed this bill in equity in
accordance with section 4915 of the Revised Statutes, and although,
as remarked by Mr. Justice Blatchford in
Gandy v. Marble,
122 U. S. 432,
122 U. S. 439,
it
"is a suit according to the ordinary course of equity practice
and procedure, and is not a technical appeal from the Patent
Office, nor confined to the case as made in the record of that
office, but is prepared and heard upon all competent evidence
adduced upon the whole merits, yet the proceeding is in fact and
necessarily a part of the application for the patent."
Considered in this light, it is clear that the validity of a
patent was not involved. And we may add that it appears to us to be
quite
Page 161 U. S. 238
inconsistent with the intention of Congress for this Court to
take jurisdiction on appeal of applications for patents in view of
the provisions in relation to appeals from the circuit courts of
appeals under the Act of March 3, 1891, 26 Stat. 826, c. 517.
United States v. Amer. Bell Telephone Co., 159 U.
S. 548.
The matter in dispute was not money, and the only remaining
inquiry is whether it was a right capable of being ascertained in
money, and appearing to be of the requisite pecuniary value.
The answer to this inquiry requires the application of the
settled and necessary principle that the matter in dispute is, as
was said by MR. JUSTICE FIELD in
Lee v.
Watson, 1 Wall. 337,
68 U. S. 339,
"the subject of the litigation -- the matter for which the suit is
brought," and that matter here was the issue of a patent -- that
is, an application to the courts below to hold the alleged
invention patentable and authorize a patent to be issued.
It is true that
"the discoverer of a new and useful improvement is vested by law
with an inchoate right to its exclusive use, which he may perfect
and make absolute by proceeding in the manner which the law
requires,"
and that an assignment may, under circumstances, be made which
will operate upon the perfect legal title which the discoverer had
a lawful right to obtain, as well as upon the imperfect and
inchoate interest which he may actually possess.
Gayler v.
Wilder, 10 How. 477,
51 U. S.
493.
So rights growing out of an invention may be sold whether the
sale in any case carries with it anything of value or not.
Hammond v. Mason & Hamlin Organ Co., 92 U. S.
724,
92 U. S. 728.
But
"until the patent is issued, there is no property right in it --
that is, no such right as the inventor can enforce. At all events,
there is no power over its use, which is one of the elements of the
right of property in anything capable of ownership."
Marsh v. Nichols, 128 U. S. 605,
128 U. S. 612;
Brown v.
Duchesne, 19 How. 193.
The right to apply for a patent was being availed of in this
proceeding, and the invention cannot be regarded for jurisdictional
purposes as in itself property or a right of property having an
actual value susceptible of estimation in money.
Page 161 U. S. 239
Whether the alleged invention were patentable or not was the
question, and that question had no relation to its value in money.
If the invention were not patentable, Durham had suffered no loss;
if the invention were patentable, it was not material whether it
had or had not a money value.
The bill, properly enough, does not allege that any sum of money
was in dispute, although there are averments that the value of the
invention is generally recognized, and that sundry persons are
deriving large profits in making the device sought to be patented.
Evidence of that kind, though not controlling, is sometimes
introduced in suits on patents as indicative of invention in the
production of new and beneficial results, but it is not relevant
here, nor are the affidavits presented on the question of value if
the patent were granted. The matter in dispute must have actual
value, and that cannot be supplied by speculation on the
possibility that, in a given case, an invention might be held
patentable.
In
Sparrow v.
Strong, 3 Wall. 97, jurisdiction was sustained on
the ground that a mining claim acquired under mining rules and
customs recognized by the laws of the Territory of Nevada, though
the land where it existed had never been surveyed and brought into
market, might be the subject of estimate in money; that the claim
might perhaps have existed under the former governments of Spain or
Mexico, and that, moreover, mining interests, apart from fee simple
rights in the soil, existed before the Act of Congress of February
27, 1865, under the implied sanction of the federal government. The
distinction between that case and the one before us is obvious.
We are of opinion that the matter in dispute in this case was
not capable of being valued in money, and that the appeal must be
dismissed.
It is suggested that jurisdiction was entertained in
Gandy
v. Marble, 122 U. S. 432;
Hill v. Wooster, 132 U. S. 693, and
Morgan v. Daniels, 153 U. S. 120, to
the contrary of the conclusion at which we have arrived. But
Morgan v. Daniels and
Hill v. Wooster were
appeals from circuit courts, taken before the passage of the
Judiciary Act of March 3, 1891, and when section 699 of the Revised
Statutes was in force, which
Page 161 U. S. 240
allowed appeals from those courts irrespective of the sum or
value of the matter in dispute in cases "touching patent rights,"
and while we admit that a patent right does not exist while the
proceeding to obtain it is pending, yet we think that such a
proceeding constituted a case touching patent rights within section
699. And
Gandy v. Marble was an appeal from the Supreme
Court of the District of Columbia taken before the passage of the
Act of March 3, 1885, and when the final decrees of that court
could be revised by this Court on appeal in the same manner and
under the same regulations as decrees of circuit courts. Rev.Stat.
§ 705; Rev.Stat.Dist.Col. § 846.
Appeal dismissed.
