Opinion of the Court.

The answer denied infringement, and set up two patents on the question of novelty, and denied the utility of the invention. After replication, proofs were taken on both sides, and the Circuit Court, on a hearing, dismissed the bill.

Mr. John H. Miller and Mr. J. P. Langhorne for appel

lants.

Mr. M. A. Wheaton for appellee.

MR. JUSTICE BLATCHFORD, after stating the case, delivered the opinion of the court.

Infringement is alleged of only the first claim, namely, "The feeding cylinder I, mounted upon the movable timbers HH, substantially as and for the purpose above described." The specification states, in regard to the subject of the first claim, that the improvement consists "in mounting a feed cylinder upon a movable frame or truck, so that it can be readily shifted from place to place when it is desired to repair the mill." The specification speaks of the timbers H H as being the foundation timbers upon which the feeding cylinder is mounted, and it says that those timbers "are mounted upon rollers, so that the cylinder and frame can be moved about as desired." Therefore, "the movable timbers H H" of the claim are timbers made movable by being mounted upon rollThe specification also states, that "the cylinder I is made of cast metal, and has its outer surface formed into chambers or depressions, J J, which are separated from each other by longitudinal partitions, K."

ers.

It is contended, in defence, that claim 1 of the patent is really a claim only for making the timbers movable, by mounting them upon rollers, so as to be able to move the cylinder and frame about as desired, and that this required no exercise of any inventive faculty. This seems to be the purport of the invention, as stated in the specification. It is the movable character of the frame on which the feed cylinder is mounted, so that the cylinder and frame may be readily shifted from place to place, when repairs are desired, that is designated as

Opinion of the Court.

the invention. When the mill is in operation, the movable feature is not brought into play. It is only when the mill is out of operation that the movable feature is to be used. The first claim does not appear to cover the functions or operation of the feeding cylinder I, as a part of the mill when in operation; and, interpreting it by its own language as well as by that of the description in the specification, it covers only the mounting upon rollers of the timbers which carry the feeding cylinder. Merely putting rollers under an article, so as to make it movable, when, without the rollers, it would not be movable, does not involve the inventive faculty, and is not patentable. Atlantic Works v. Brady, 107 U. S. 192, 200; Thompson v. Boisselier, 114 U. S. 1, 12, and cases there cited; Yale Lock Mfg. Co. v. Greenleaf, 117 U. S. 554, 559; Pomace Holder Co. v. Ferguson, 119 U. S. 335, 338, and cases there cited.

This defence is one which can be availed of without setting it up in an answer. Dunbar v. Myers, 94 U. S. 187; Slawson V. Grand Street Railroad Co., 107 U. S. 649; Mahn v. Harwood, 112 U. S. 354, 358.

Moreover, there is no patentable combination between the rollers which make the timbers movable and the feeding cylinder I, mounted upon the timbers. The union of parts is merely an aggregation. The feeding cylinder, mounted upon timbers which have rollers, operates no differently from what it does when mounted upon timbers which have no rollers. Hailes v. Van Wormer, 20 Wall. 353, 368; Reckendorfer v. Faber, 92 U. S. 347, 357; Pickering v. McCullough, 104 U. S. 310, 318; Bussey v. Excelsior Mfg. Co., 110 U. S. 131, 146. There is nothing patentable in the aggregation.

The defendants' machine has a smooth cylinder, and not a cylinder with chambers or depressions. The specification of the patent describes the cylinder I as having its outer surface formed into chambers or depressions, separated from each other by longitudinal partitions. The cylinder of claim 1 is "the feeding cylinder I," and, to be such cylinder, must be a cylinder substantially as described, and it is described specifically as having chambers or depressions. The claim cannot

Opinion of the Court.

be construed to cover a cylinder with a smooth surface, not formed into chambers. Fay v. Cordesman, 109 U. S. 408, 420, 421; Sargent v. Hall Safe & Lock Co., 114 U. S. 63, 86; Shepard v. Carrigan, 116 U. S. 593, 597, 598; White v. Dunbar, 119 U. S. 47, 51, 52 Crawford v. Keysinger, 123 U. S. 589, 606, 607

The decree of the Circuit Court is affirmed.

UGH

ST. PAUL PLOUGH WORKS v. STARLING.

ERROR TO THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF MINNESOTA.

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 66 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. Charles S. Careins and Mr. D. S. Frackelton for the motion.

Mr. John B. Sanborn and Mr. W. H. Sanborn, opposing.

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 plough, under letters patent granted August 18, 1874, to the plaintiff for an

Opinion of the Court.

improvement in ploughs, (of which he alleged in his complaint that he was the first and original inventor,) and the defendant agreed to make such ploughs in a good and workmanlike manner, and to 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 plough 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 ploughs, and averred that his alleged improvement had been described in six earlier patents specified; admitted that the defendant had made and sold ploughs according to the method described in letters patent granted March 9, 1880, to one Berthiaume, and averred that those ploughs 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 ploughs under the Berthiaume patent, and 350 other ploughs; that all those ploughs infringed the plaintiff's patent, and that the plaintiff's invention was not anticipated by either of the six other patents set up in the answer; and concluded that the plaintiff was entitled to a royalty of $2.50 on each plough sold by the defendant, amounting to $3275; overruled a motion for a new trial, and gave judgment for the plaintiff accordingly. 29 Fed. Rep. 790; 32 Fed. Rep. 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 $5000.

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 reënacts the corresponding provision of the patent act of 1870, in

Opinion of the Court.

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 Court 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.