1 Blatchf. 480 | U.S. Circuit Court for the District of Southern New York | 1849
1. Article 1, § 8, Const. U. S. provides, among other things, that congress shall have power “to promote the progress of science and useful arts, by securing, for limited times, to authors and Inventors, the exclusive right to their respective writings and discoveries” — and “to make all laws which shall be necessary and proper for carrying into execution the foregoing powers.”
The first act of congress carrying into execution the above power was passed on the 10th of April, 1790, (1 Stat. 109.) the fourth section of which provided, that if any person should make or vend within the United States any art, manufacture, &c., the exclusive right of which should have been granted by patent to any person, every person so offending should forfeit and pay to the patentee such damages as should be assessed by a jury in an action on the case. This act was repealed by Act Feb. 21, 1793, (1 Stat. 318,) the fifth section of which enacted, that the party infringing should forfeit and pay three times the price for which the patentee had usually sold the article, which might be recovered “in the circuit court of the United States, or any other court having competent jurisdiction.” The act of the 17th of April, 1800, (2 Stat. 37,) repealed the fifth section of the act of 1793, and provided, that the party infringing should pay to the patentee a sum equal to three times the actual damage sustained by him, which should be recovered in an action on the case, “in the circuit court of the United States having jurisdiction thereof." Hie present act, passed July 4, 1836, (5 Stat. 123, § 14,) provides, that the court 'may increase the damages, not exceeding three times the amount of the verdict, and that such damages may be recovered by action on the case, “in any court of competent jurisdiction.” Section 17 of that act provides, that all actions, suits, &c., in cases arising under the patent laws, shall be originally cognizable “by the circuit courts of the United States, or any district court having the powers and jurisdiction of a circuit J court.”
j It will be seen, by this brief reference to I the acts of congress, that the remedy pre- ! scribed in behalf of the patentee, to enable him to recover damages for the violation of his right, is limited to a circuit court of the I United States having jurisdiction of the case, ! leaving the question as to the appropriate j circuit in which to bring the action in any j given case, to be determined by the existing | provisions on that subject. But the remedy j is given to any patentee, against any person ! who has been guilty of an infringement, with- | out any restriction as to the parties,
j By the eleventh section of xne judiciary act i of 1789, (1 Stat. 78,) it is provided, that the j circuit courts shall have original cognizance, ; concurrent with the courts of the several i states, of all suits of a civil nature at common law or in equity, where the matter in dispute exceeds, exclusive of costs, the sum or value of five hundred dollars, and (1.) “the United States are plaintiffs or petitioners; or” (2.) “an alien is a party; or” '(3.) “the suit is between a citizen of the state where the suit is brought, and a citizen of another state.” — “But no person shall be arrested in one district for trial in another, in any civil action before a circuit or district court. And no civil suit shall be brought before either of said courts against an inhabitant of the United States, by any original process in any other district than that whereof he is an inhabitant, or in which he shall be found at the time of serving the writ.” In actions commenced under the first branch of this section, where the jurisdiction of the court depends upon the citizenship of the parties, it has been held, that the suit must be brought in the state in which the party plaintiff or defendant was at the time a resident or inhabitant. Kitchen v. Strawbridge, [Case No. 7,854;] Shute v. Davis, [Id. 12,828; Craig v. Cummins, Id. 3,331.] And the citizenship must appear upon the face of the record. Bingham v. Cabbot, 3 Dall. [3 U. S.] 382; Abercrombie v. Dupuis, 1 Crunch, [5 U. S.] 343; Wood v. Wagnon, 2 Cranch, [6 U. S.] 9.
Upon this clause of the section, and the authorities, it is contended on the part of the defendant, that the circuit court in Massachusetts had no jurisdiction over the suit in equity, inasmuch as it did not appear upon the record that either of the parties was at the time a citizen or resident of the state of Massachusetts, but the contrary; the one being a citizen and resident of Connecticut,
The latter clause of the section referred to is general, and applies to all suits commenced in the circuit or district courts. A defendant cannot be arrested in a district other than that in which the suit is brought, nor can the suit be commenced against an inhabitant of the United States, by original process, in any other district than that of which he is an inhabitant, or in which he is ■found at the time of serving the writ. These .are the only restrictions that apply to the power or right of the court to exercise jurisdiction over the person, in the present case.
2. The seventeenth section of the act of July 4, 1836, gives jurisdiction to the circuit -courts of the United States, in all cases arising under any law of the United States .granting or confirming to inventors the exclusive right to their inventions or discoveries, “as well in equity as at law;” “which courts shall have power, upon bill in equity filed by any party aggrieved, in any such' case, to grant injunctions, &c.” The jurisdiction thus conferred upon the circuit courts in patent cases in equity, is as broad and general in the terms of the grant, as is found in respect to the particular cases of jurisdiction enumerated in the eleventh section of the judiciary act of 1789, and in reference to which it has been repeatedly held, that jurisdiction exists independently of the local laws of the states; and is the same, in its nature and extent, as the equity jurisdiction in England, from which it was derived. Robinson v. Campbell, 3 Wheat. [16 U. S.] 212, 221; U. S. v. Howland, 4 Wheat [17 U. S.] 108; Parsons v. Bedford, 3 Pet. [28 U. S.] 433, 447; Gordon v. Hobart, [Case No. 5,609.] The following cases will show that it is the settled practice of the English chan•cery, on injunction bills filed by the patentee, when there is no dispute about the title, to refer the case to a master, to take and state an account of the profits which the defend.ant has made by the use of plaintiff’s invention, instead of sending it to a court of law to assess the damages. The defendant is regarded as having been in the use and enjoyment of property that belonged exclusively to the patentee, and as being bound in equity .to account for the profits. Crossley v. Derby Gas Light Co., Webst. Pat. Cas. 119, 3 Mylne & C. 428; Hind. Pat. 354, 355, 361, 363; Bacon v. Jones, 4 Mylne & C. 433, 436; Pierpont v. Powle, [Case No. 11,152;] Curt. Pat. §§ 346, 348; Ogle v. Ege, [Case No. 10,462.]
The question before us is one of power, not whether the case was one fit and proper to be sent to the master, nor whether his report was properly confirmed. If the circuit court in Massachusetts had jurisdiction over the subject matter and parties, the correctness of the decree cannot be called in question collaterally.
3. But, on looking into the record, we find a defect, not noticed on the argument. That is, the omission to set forth, with reasonable certainty, the service of the subpoena upon the defendant in the district of Massachusetts. As the subpoena was doubtless thus served, and as that fact is also strongly in-ferable from the record, it was assumed both at the trial and argument. But, as the fact is vital to the jurisdictional question, it should have been stated upon the record made up and now before us, with strict certainty, and not have been left to implication or intendment. There is no averment whatever to be found in it, of service of the writ of subpoena. The only evidence of the fact is the return of the marshal upon the writ, which is set out; but that does not state where the service took place. There is, indeed, a strong implication arising out of the return as to Syms, namely, that he could not be found to be personally served in the district. But it does not necessarily follow from this, that the service upon Blunt was there. As the jurisdiction of the court over him rests altogether upon this fact, it should not, as before stated, have been left to doubtful implication.
The fact of the service upon the defendant in the district of Massachusetts resting wholly upon the subpoena and return as %et forth, they are also subject to remark. The writ of subpoena is not directed to the marshal, for anything that appears in the record; and the return speaks of the service of a notice upon Blunt, which might very well refer to the memorandum accompanying the subpoena, directing that the appearance of the defendants must be entered on or before the return day of the writ, or the bill would be taken pro eonfesso. The return is vague, even as it respects the proper service of the writ; but the insuperable objection is, that it does not show affirmatively, that the service was made in the district of Massachusetts.
For this reason, a new trial must be granted, with costs to abide the event.
