WILLIAMS
V.
STAR SAl'\D
CO.
869
STAR
CO., Limited,et !d. May 81, 1888.)
(Gircuit Gourt,
w: n. Pennsylvania.
COURTS-FEDERAL JURISDICTION-QUESTIONS ARISING UNDER PATENT LAWSAsSIGNMENT OF PATENT-BREACH OF CON'l'1tAC'l'.
Keller, the gnmtee of letters patent, assigned one-half of I,he patent to Williams by an instrument in ,writing recorded in the pattHlt-otlice, which, after the assigning clausa reads as follows: "This assignment is made and accepted upon the distinct understanding and agna,went between the parties thereto that neither the said Keller nor the said Williams is to make any traJlSfer of his respective interest in said patent, nor to grant any license to use the s,ame, without,the written consent of the other; and fnrther. that neither of llaHlparties shall build more than one boat each with the said patented improvementupon it, without the written consent of the other; and the boat each is permitted so to bliild is t6 be used only by said party as an individual, and not as a member of any firm or copartnership. without the written conKeller and his associ· sent of the other' party." Williams filed a atesin business acting under him, charging them with using the patented in· vention in violation of the above-quoted clause of the instrument of assignment, and praying for an injunction, etc. Held, that the case was not one arising under th'e patent laws, and the court had no jurisdiction thereof, aU the parties ,to the suit bein/;t citizens of the same state. 1 Bill for injunction to rel:ftrain the infringement of letters
In Equity. patent.
D. F. Patterson, for complainant. Wm. L.Pierce, for defendants.
Before MCKENNAN and ACHESON, JJ.
ACHESON, J. Nicholas J. Keller, one of the defendants, the grantee and exclusiveo\Vner of reissued letters patent No. 6,598, 10r an improvementinsand and gravel separating machines, by an instrument of writing by him. executed, bearing, date March 31, 1883, and recorded in the patent.-office on April 2, 1883, assigned the one-half of said letters patent (subject to certain outstanding licenses) to Thomas R. Williams, the plaintiff. After the assigning clause the instrument proceeds in the words following: ' · "This, assignment is made and accepted upon the distinct understanding and between tbe parties thereto that neither the said Keller nor tbe said Williams is to make any transfer of his respective interest in said patent, nor to grant any license to use the same, without the written consent of the other; and further that neither of said parties shall build more than one boat each with the said patented improvement upon it, without the written cOllsent of the other; and the boat each is permitted so to build is to be used only by said party as an individual, and not as a member of any firm or copartnership. without the written consent of the other party. " The bill recites the invention of said improvement by Keller; the grant of the original patent to him; the surrender thereof, and the.grant of the reissue; and the said instrument of writing of March 31, 1883. The bill alleges and the answer admits that the defendant, the Star Sand 1 See
note at end of case.
v.::l5F.no.6-24
FEDERA.L' REPORTER.,'
Company, Limited, is a partnership association organized under the laws of Pennsylvania by,andcoIl'lposed of, the said Nicholas,J.' Keller, Agent, and John Hoffman, John R. Clark, and C. Mensinger, and these four named persons are individually made co-defendants with the Star Sand Company, Limited. The proofs show that Keller is president or chairman of thelirnited partnership, and that the principal for whom he as a member oithe associati,onliCts,is,his wife. All tbeparties to the suit are citizens of Pennsylvania; The bill alleges that "the said defendants he,fein Darnell,'" ,are using one or more of the patented machineswithout the (',()nsent of the plaintiff, "and in violation of tile l'ights secured to him by-virtue of said reissued letters patent, and the aforesaid assignment of date of March 31, A. D. 1883." The bill 'sets forth that the plaintiff" has repeatedly requested the said Nicholas J.: Keller to desist from suchun,authorizeduse ofSaid patented improvement." and that he has requestedI{eller to join'hhil: iJl,'a, suit against the other defendants to restrain them from furtherinfringingsaid letters patent; "which the said Keller has neglected and refused" to The bill prays that the defendants may,apcount for,the "profits 9r savings thus unlawfully derived or made by the violation of your orator's rights,". and that upon "entering a decree in favor of your orator and said defendants for infringement," the ,damages sustained by him "by reason of such infringement" be assessed against, and decreed to be paid by, the defendants; and for an injunction to restrain the defendants "from any further use of said patented improvement in violation of your 'oratO.r's rights,as li.foresaid." : . . The answer, in w,hich all the defendants join, admits that Keller was <the first and original'inventor of said improvement{the grant to him of the original letters patent, the due surrender thereof, the grant to him of the reissue,and the validity of the same, the execution by Keller of the written, instrument of March 31, 1883, and the association as charged in the bill of the defendants· as; the Star Sand Company,Limited.' The 'answer further,admits thaUhe Star SandComplliny, Limited, owns ll.nd Qperates two boats, viz., the Hippopotamus and Genii,equipped with the machine, the ownership of which boats with their patented the company acquirEld from Keller; and that under a contract with Keller the company takes theentire,j'lift" oithe Star, a boat (:owned by Kellei'; and equipped with the patented 'improvement, which 'boat was built by him under the privilege expressly reserved to himby thetermsofthe 31,1883; and the answer gets up that by a contemporane lusoral agreement entered into between Keller and Williams the Hippopotamus and Genii were excluded from the limitations of said instrument. , The case is now before us upon the pleadings and proofs. 'Wewill not, howev.er, enter upon It discussion, or express any opinion as to the n1erits of the controversy; because, after a careful consideration of the :subject, we have reached the conclusion that the case does not arise un<ler the patent laws, and that the bill must be dismissed for want of jurisdiction. Wilson v. Sandford, 10 How. 101; Hartellv. Tilghman, 99 U. '.'
871 S. 547; Albright v. Teas, 106 U. S. 613, 1 Sup. Ct. Rep. 550; Manufacturing Ce. v. Hyatt, 8 Sup. Ct. Rep. 756. The controversy does not involve the validity or the construction of the patent. In nowise whatever is the patent drawn in question, arid therefore the decision in Littlefield v. Perry, 21 Wall. 205, does not apply., In truth the case springs altogether' out 'of a contract, and the manifest purpose o£the suit is to enforce that contract. The infringement of the patent is not the real ground of the action. Indeed, without the recited agreement the bill would have 110 solid basis. Clearly one part owner. of a patent can.not maintain a. suit for infringement against his co-owner. Manufacturing .CO. v. Gill, 32 Fed. Rep. 697, 702. Now, Keller is not a nominal defendant here. bill contains special matter of com.plaint against him, and all the prayers for reUef include him. Then the other defendants stand in such as infringers; so that, whatrelation to Keller that they cannot be ever case the plaintiff may ha\1e against any of the defendants is to be referred to the contract, the breach of which is the gravamen onhe bill. There is no question in the case depending upon the con8,truction .or effect of patent laws. 4:898, Rev. St., enact.Sthat ."e\1ery. patent, or interest therein, snallbe assignahle in law by an instrument writing," and provision is made for recording such"assignment, grant, or conveyance" in the patent-office for the purpose .of noticet(} subsequent purchasers or mortgagees. But a collateral agreement hetween assignor and assignee, such as we have here, restrictive of the power to their respective interests in the' patent, and governing their rights in the use of the invention, whether incorporated in the instrument of assignment or not, is not provided for or regulated by section 4898, or by any act of congress. That the rights of the parties under such contracts depend altogether on common-law and equity priucipIes, is the declared doctrine of aJ-J the above-cited decisions of the. supreme conrt. Let a decree be drawn dismissing the bill for want of jurisdiction, with . , costs.
of
NOTE. OJ' STATE AND FEDERAL COURTS. Plaintiff rodefendant one-third of the right to an invention. The patent-oftlce divided the application for the patent into three applicatioIisfor as many inventions. HeW, that the question whether this subdivision dlvested defendant of bis interest in one of the patents issued was purely one of patent law, of which the circuit court of the United States had jurisdiction. Puetz v. Bransford, 32 Fed. Rep. 318. On application for an injunction to prevent defendant from a patent, held, that if complainant's case were founded solely upon some contract wlth defendant, it did not arise under the patent laws, and the circuit court of the United l;ltates would have no jurisdiction. WatchCase Co. v.Leach,amte, 2. In Store-Service Co. v. C!al'k,(N. Y.) 3N. E. Rep, 335, MILLER, J., says: "It is very ,"pp\U"ent that cases may arise upon controots rdlating to patents and their validity, which are especially within the pow.,r doud jUrizodiction of the state courts; but it by no means follows necessarily that this jUrisdiction confers upon the state courts the right to tldjudicate and determine questions arising as .to infnngements made upon rights and privileges'which are secured by patents issued by the government. The interpretatiOn of the contract, the effect to be to its various parts, and even the right to the patent, Dlay well be the subject 01 consideration witliin the courts of the state; while ap.y interference beyond this is in contravention of the general rule that in 'lillC):J. the,jurisdiction reste exclusivel)' within the courts of the United States." See, also, ManufaCturing Co. v. Reinoehl, (N. Y.) 6 N. E. Rep. 264. . ,
372
FEDERAL REPORTER.
COOLEY ",.'MCARTHUR
et al.
((Jircuit Oourt; E. JJ. Michigan. .July 2, 1888.)
1.
"REMOVAL OF CAUSES-AcTION AGAlNsT NON-REsIDENT-ALIEN ACT OF
1887. The circuit courts of the United 'States have jurisdiction, by removal, of a suit begun in a state court by'a resident citizen against a non-resident alien defendant. notwithstanding the provision of the act of 1887 that "no civil suit shall be brought before either of said courts against any person by any original process or proceeding in any other district than that whereof he is an inhabitant." 1
2. SAME.
In such case jurisdiction exists by virtue of the citizenship of the plaintiff and alienage' of the the provision that the defendant shall not be sued in any other district than that of which he is an inhabitant is only he may Qf may not avail himself, as a personal exemp, a privilege. tion from suit within such other jurisdiction.! (Syllabu8 by the Oourt.) ,
On Motiool'to Remand. This was an.Rction of tortbegrin in the circuit court for tre .county of Wayne by a citizen of Michigan against non-resident alien defendants, Plaintiff moved and removed to this court upon petition of to remand upon the ground that uMendants, not being inhabitants of of this district, within the meaning of section 1 the act of March, 1887, the case is not one of which this court would have had original jurisdiction, and therefore, under section 2, it can have no jurisdiction by removal. . Ayred RU88eU, for plaintiff. H. O. Wisner, for defendants· .BRoWN, J. By the first section of the act of March, 1887, the circuit all suits of a civil nature involvcourts are given original ing upwards of $2,000, in which there shall be "Ii. controversy between citizens of a state and foreign states, citizens, or subjects," with the further proviso that "no civil suit shall be brought before either of said any person by any original process or proceeding in any courts other district than that where,of he is an inhabitant," with an exception to this proviso not necessary to be noticed here. By the second section the right of removal is limited to cases "of which the circuit courts of the United States are given original jurisdiction by the precedingsection," and a further clause provides that sUCll right can only be exercised "by the defendant or defendants therein being 11on-residents of t:hat state." It necessarily follows that, if this court would have original jurisdiction of an action against a non-resident alien; we have jurisdiction of this case; otherwise. not. The language of the first sectioninllicates very that if the defendant chose to plead in abatement of $ucb a suit the plea would be We regard it as Clear, howevar, that if such plea were not interposed, and the detendantpleaded in bar, 1See Dote at end of case.