6 Stevens v. Gladding, 17 How. 447; Stevens v. Cady, 2 Curt. 200. 7 Widmer v. Greene, 56 How. Pr. 92; see note to Black v. Allen. 92 R. A. 433.

8 Taft v. Stephens L. & E. Co., 37 Fed. Rep. 726.

2

§ 8 b. Suits arising out of the patent laws.The circuit courts have plenary jurisdiction over all actions, suits, or controversies, both in law and in equity, arising under the patent laws; and an action which raises the question of infringement is an action arising under the law, and it may involve the construction of a contract as well as the patent. But if the contract is not provided for and regulated by an act of Congress, the court has no jurisdiction, nor will jurisdiction extend to a controversy arising under a contract concerning a patent subsequently to be obtained. If the parties are citizens of different States, and the amount claimed exceeds five hundred dollars, the court has jurisdiction over a claim arising on a contract; but if the parties are citizens of the same State, it cannot entertain a bill to compel an assignment of the patent as agreed for; and the mere fact that the bill prays for an accounting will not confer jurisdiction.7 The court will not entertain a suit to have the interest of a patentee sold to satisfy a judgment issued from a State court. Where a party's rights arise under a contract, he cannot maintain a bill in equity against patentee and purchaser who purchased in violation of the license, without a regard to the citizenship of the parties. If an infringement is proved, the court will take cognizance of matters incidental, as where defendant has forfeited his right under a license. 10 If the parties are citizens of the same State, the court has no jurisdiction over a bill to obtain the cancelation of a license on account of the inva

lidity of the patent." If the circuit court in a patent case has jurisdiction over the subject-matter and the parties, its decree cannot be collaterally questioned. 12 The circuit court has no jurisdiction to vacate a patent on the ground of false suggestions, or that the government had no right to grant it;13 nor can a junior patentee maintained an action against a prior patentee to obtain an adjudication that his patent does not conflict with a prior patent. The jurisdiction at law and in equity is concurrent, and a party may select his forum, though he

16

seeks the recovery of money only; 15 and if compelled to go into a court of equity to obtain a discovery, the court, after the discovery, will proceed on the merits.1 A bill for a discovery cannot be maintained upon a corporation. 17 The jurisdiction conferred in equity exists independently of State laws, and is similar to the equity jurisdiction in England;18 and want of equity does not imply a defect of jurisdiction. It is only when the court is without power to pass upon the subject-matter, or to grant the relief sought, that its jurisdiction may be questioned. 19 A court of equity has jurisdiction to enjoin the use of a patented invention, and for an account of profits, although an action at law may be maintained to recover damages, 20 and a suit for an account of profits is properly brought in equity. 21 Where the complainant seeks an

account

and discovery, the court may award damages for the breach of contract.22 Although the patent has expired, and an injunction cannot issue, yet an account can be ordered and other relief granted. 23 A suit for an accounting cannot be maintained unless there are actual profits resulting from the infringement susceptible of estimation. 24 If defendant dies pending suit, complainant may revive the suit against his personal representatives to obtain an account of profits. 25

1 Nevins v. Johnson, 3 Blatchf, 80; Perry v. Corning, 6 Blatchf. 134; Gordon v. Anthony, 16 Off. Gaz. 1135. But see contra, Sayles v. Richmond F. & P. R. R. Co., 3 Hughes, 172.

2 Littlefield v. Perry, 21 Wall. 205; Magic Ruffle Co. v. Elm City Co., 13 Blatch. 151.

3 Wilson v. Standford, 10 How. 99; Hartwell v. Pilghman, 99 U. S. 547; Goodyear v. Day, 1 Blatchf. 565; Goodyear v. Union Rub. Co., 4 B.atchf. 63; Magic Ruffle Co. v. Elm City Co., 13 Blatchf. 151; Blanchard v. Sprague, 1 Cliff. 283.

4 Brooks v. Stolley, 2 McLean, 523; Nesmith v. Calvert, 1 Wood. & M. 34.

5 Bloomer v. Gilpin, 4 Fish. Pat. Cas. 50.

6 Perry v. Littlefield, 2 Fed. Rep. 464; Burr v. Gregory, 2 Paine, 426.

7 Burr v. Gregory, 2 Paine, 426.

8 Ryan v. Lee, 10 Fed. Rep. 917.

9 Hill v. Witcomb, 1 Holmes, 317.

10 Erooks v. Stolley, 3 McLean, 523; Bloomer v. Gilpin, 4 Fish. Pat Cas. 59.

11 Merserole v. Union Paper C. Co., 6 Blatchf. 356,

12 Allen v. Blunt, 1 Blatchf. 430.

13 Att.-Gen. v. Rumford Wks., 9 Off. Gaz. 1062.

14 Celluloid Manuf. Co. v. Goodyear D. V. Co., 13 Blatchf. 375.

13 Perry v. Corning, 6 Blatchf. 134; Anthony v. Carroll, 9 Off. Gaz. 199. Contra: Sanders v. Logan, 2 Fish Pat. Cas. 167.

16 Magic Ruffle Co. v. Elm City Co., 14 Blatchf. 109.

17 Vaughan v. Cent. P. R. R. Co., 14 Pacif. L. Rep. 274.

18 Allen v. Blunt, 1 Blatchf. 480

19 McMillin v. Barclay, 5 Fish. Pat. Cas. 189.

20 McMillin v. Barclay, 5 Fish Pat. Cas. 189.

21 Dibble v. Augur, 7 Elatchf. 86.

22 Magic Ruffle Co. v. Elm City Co, 13 Blatchf. 151.

23 Imlay v. Railroad Co., 4 Blatchf. 227; Wood Paper Co. v. Glen's Falls Co., 8 Blatchf. 513; McComb v. Beard, 10 Blatchf. 350; Blank v. Manuf. Co., 3 Wall. Jr. 196; Vaughan v Cent. P. R. K. Co., 4 Sawy. 280; Howes v. Nute, 4 Fish. Pat. Cas 263; Smith v. Baker, 31 Leg. Int. 126; Jordan v. Waliace, 5 Fish. Pat. Cas. 185.

24 Vaughan v. Cent Pac. R. R. Co., 14 Pacif. L. Rep. 274. 25 Smith v Baker, 31 Leg Int 126.

§ 8 c. Exclusive jurisdiction in patent cases.-State courts have no jurisdiction in suits to restrain infringement of a patent; although they may adjudicate on assignments and other contracts involving patent-rights, have no jurisdiction to enjoin infringement of a patent. The jurisdiction of the United States courts is exclusive.2 The circuit court has jurisdiction where defendant seeks to defeat the right by a collateral covenant. They have jurisdiction of all suits arising under the patent laws, and have power upon a bill in equity, filed by a party aggrieved, to grant injunctions according to the course and principles of courts of equity to prevent the violation of any right secured by patents.* And state courts have no jurisdiction to enjoin an infringement even in a case depending on the extent of the right vested by an assignment. 5 A legislature of a State cannot prevent such citizens from bringing suits in a Federal court, where the right is one which is beyond the control of any legislative action of the State, and can be regulated alone by the Contitution and laws of the United States. The jurisdiction of a circuit court over infringements of patents cannot be impaired by State legislation.' The acts of Congress of 1875 and 1887, referring to the concurrent jurisdiction of State and Federal courts, do not apply to actions for infringements of patents or copyrights, as to which Federal courts have exclusive jurisdiction without regard

6

8

to the amount involved, under U. S. Rev. Stats. secs. 711, 699, and do not repeal those sections. The United States can proceed in equity to cancel a patent issued by mistake, or obtained by fraud, where the government is under obligations respecting the relief invoked. Where plaintiff in a suit for infringement of a patent amends his bill so as to cover a reissue, the original patent having meanwhile expired, the United States circuit court may retain jurisdiction in equity. 10

1 Dudley v. Mayhew, 3 N. Y. 9; Parsons v. Barnard, 7 Johns. 144; Midd'ebrook v. Broadbent, 47 N. Y. 443; Tomlins v. Battell, 4 Abb. Pr. 266; Gibson v. Woodworth, 8 Paige, 132.

2 Continental Store Service Co. v. Clark, 1 Cent. 530; Hat Sweat Mfg. Co. v. Reinoehl, 102 N. Y. 167; Saxton v. Pennell, 30 Me. 434; Ball v. Murray, 10 Pa. 113; Dudley v. Mayhew, 3 N. Y. 14; Gibson v. Woodworth, 8 Paige, 832; Burrall v. Jewett, 2 Paige, 134; Hartell v. Tilghman, 99 U. S. 550; Barr v. Gregory, 2 Paine, 426; Brooks v. Stolley, 3 McLean, 523; Merserole v. Union Paper Collar Co., 6 Blatchf 356; Wilson v. Sanford, 51 U. S. 10 How. 99; Continental Store Service Co. v. Clark, 100 N. Y. 368. 3 Seibert Cyl. Oil Cup Co. v. Manning, 32 Fed. Rep. 625.

4 Littlefield v. Perry, 21 Wall, 88 U. S. 235.

5 Middlebrook v. Broadbent, 47 N. Y. 443.

6 Hoover v. Crawford Co., 39 Fed. Rep. 712.

7 May v. Jackson Co., 35 Fed. Rep. 710; May v. Ralls Co.,31 Fed. Rep. 473.

8 Miller-Magee Co. v. Carpenter, 34 Fed. Rep. 433.

9 U. S. v. San Jacinto Tin Co., 125 U. S. 273.

10 Reay v. Berlin &. J. Envelope Co., 91 Blatchf. 278.

§ 8 d. When jurisdiction attaches in State courts. A suit on a contract to account and pay a separate royalty for the use of a patent, where there is no question as to the validity of the patent or the right to its exclusive use, is within the jurisdiction of a State court.1 So, a suit to enforce a contract depending wholly upon common law and equity principles does not arise under any act of Congress, and plaintiff must resort to the State court for his remedy, both parties being residents of the State. So, in a suit to enforce a license to manufacture a patented article. 3 So where, in a suit on the contract, it is not necessary to decide any question depending on the patent laws. 4 State courts have jurisdiction of an action founded on a contract to assign a patent, when both parties are residents of the State at the time of making the contract. 5 Where the suit is for breach of contract, and

an infringement of a patent thereby, it is not within the jurisdiction of the circuit court of the United States, where the parties are both citizens of the same State. So, where the right secured by the patent is collateral to the main purposes of the action." A State court has jurisdiction of actions to recover the contract price of a patent right, and defendant, to show a want or failure of consideration, may prove that the patent is void. It has jurisdiction of an equitable action on a bond conditioned upon the validity of a patent.9 When an inquiry under the patent laws becomes necessary, collaterally, the State courts may make it, if necessary, unless expressly or impliedly prohibited to them by any exclusive grant of jurisdiction to the courts of the United States. 10 The right to make, sell, use, and vend a patented article is subject to the power of the State to regulate.11

1 Hubbard v. Palmer, 23 W. N. C. 166; Albright v. Teas, 106 U. S. 613, Keyes v. Eureka etc. Co., 45 Fed. Rep. 199; Wilson v. Sanford, 51 U. S., 10 How. 99; Brown v. Shannon, 61 U. S., 20 How. 55; Goodyear v. Day, 1 Blatchf. 565; Consolidated Fruit Jar Co. v. Whitney, 2 Bann. & Ard. 30; Willis v. McCullen, 29 Fed. Rep. 641.

2 McCarty etc. Co. v. Glaenzer, 30 Fed. Rep. 387; Hartell v. Tilghman, 99 U. S 547. But see contra, Continental Store Service Co. v. Clark, 100 N. Y. 365; Hat Sweat Mfg. Co. v. Reinoehl, 10% N. Y. 167.

3 Boviard v. Dick, 4 Cent. Rep. 40; Dale Tile Manuf. Co. v. Hyatt, 125 U. S. 46; Murdock v. Memphis, 87 U. S., 20 Wall. 590.

4 Kinsman v. Parkhurst, 59 U. S. 289; Jones v. Burnham, 67 Me. 93; Washburn etc. Co. v. Wilson, 16 Jones & S. 180; Bartlett v. Holbrook, 1 Gray, 114.

5 Fuller Mfg. Co. v. Bartlett, 68 Wis. 73; McCarty & H. Trading Co. ▾ Glaenzer, 24 Blatchf. 269; Wren v. Annin, 34 Fed. Rep. 435; Williams v. Star Sand Co., 35 Fed. Rep. 369; Brooklyn Watch Case Co. v. Leach, 35 Fed. Rep. 2; Burr v. Gregory, 2 Paine, 426.

6 Densmore v. Three Rivers Mfg. Co., 38 Fed. Rep. 747; Brown v. Shannon, 20 How. 56; Albright v. Teas, 106 U. S. 618.

7 Middlebrook v Broadbent, 47 N. Y. 443.

8 Rice v Garnhart, 34 Wis. 464; S. C., 17 Am. Rep. 451. See Dickinson ▾ Hall, 14 Pick 217; Saxton v. Dodge, 57 Barb. 84; Middlebrook v. Broadbent, 47 N. Y. 443.

9 Middlebrook v. Broadbent, 47 N. Y. 446; S. C., 7 Ain. Rep. 459; Burrell v. Jewett, 2 Paige, 134.

10 Hovey v. Rubber Tip Pencil Co., 57 N. Y. 124; S. C., 15 Am. Rep. 473. 11 Hockett v. State, 2 West, 770; New v. Walker, 6 West, 809; Hocket v. State and Brechbill v. Randall, 2 West, 770, 731.

§ 9. In bankruptcy.-The

circuit

court

shall have jurisdiction in matters in bankruptcy,