'The dispute in this case does not arise under any act of congress, nor does the decision depend upon the construction of any law in relation to patents. It arises out of the contract stated in the bill, and there is no act of congress providing for or regulating contracts of this kind. The rights of the parties depend altogether upon common-law and equity principles.'
The case of Hartell v. Tilghman, 99 U.S. 547, is also in point. In that case Hartell, the complainant, alleged that he was the original patentee and inventor of a process for cutting and engraving stone, glass, metal, and other hard substances by what is known as the sand-blast process; that the defendants had paid him a considerable sum for machines necessary in the use of his invention, and had also paid him during several months the royalty which he asked for the use of the invention described in and secured by his patent; that the defendants refused to do certain other things, which the complainant charged to have been a part of the consideration of the contract between them, whereupon he had forbidden them further to use his invention, and that the defendants had disregarded this prohibition. The bill prayed for an injunction, an account of profits, and damages.
The defendants admitted the validity of the patent, their use of it, and their liability for its use under their contract with the complainant, and offered to perform all that the contract required them to perform. All the parties were citizens of the same state.
Upon this case the question of the jurisdiction of the United States courts was raised, and this court, after a review of several cases bearing on the subject, held that the suit was not one arising under the laws of the United States, and that the circuit court had no jurisdiction of the case, and reversed its decree, and remanded the cause, with directions to dismiss the bill.
The argument against the jurisdiction in the case under consideration is stronger than in the two cases above referred to. In each of these cases the object of the complaint in filing the bill was to go behind the agreement under which the defendant had contracted for the right to use the complainant's invention, and to obtain an injunction against the defendant as an infringer. In this case the appellee admits the contract to be in force, and simply seeks to compel its performance.
The following cases cited by this court in Hartell v. Tilghman are in accord with the views we have expressed: Goodyear v. India Rubber Co. 4 Blatchf. 63; Merserole v. Union Paper Collar Co. 6 Blatchf. 356; Blanchard v. Sprague, 1 Cliff. 288; Hill v. Whitcomb, 1 Holmes, 317.
From the conclusions reached by us, it follows that the decree of the circuit court remanding the cause to the state court must be affirmed.
Notes edit
This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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