266 Ill. 287 | Ill. | 1914
delivered the opinion of the court:
The demurrer admitted the facts well pleaded but not appellant’s conclusions nor his construction placed upon the contract and the correspondence made a part of the bill. That the parties did not understand the agreement alike is apparent from the correspondence between them, made part of the bill, which took place very soon after the agreement was signed. ' The agreement was not that appellant should obtain letters patent on an invention by him broadly covering the combination embraced in pig-iron handling and breaking machinery as then constructed and assign them to the hoisting company and receive a royalty therefor, but that if he did obtain letters patent within two years he would assign them. The correspondence between the parties very soon after the date of the agreement negatives any construction that Brown was acting for or on behalf of appellant in procuring letters patent. Appellee’s predecessor company wrote appellant at length of its understanding of the agreement soon after it was made and what its understanding was as to the invention for which appellant proposed to apply for letters patent. He was also informed ■ that the hoisting company had taken up with Brown the question of securing patents covering the apparatus at appellant’s plant, the Iroquois Furnace Company; that it was' Brown’s intention to take out such patents as were invented and perfected by him and to apply af once for a patent “covering the method of handling the pigs and sow, with details pertaining to the same.”
' To. the objection of appellee that the case directly involves the validity of the patent issued to Brown; that if is a case arising under the patent laws of the United States, and the superior court was therefore without jurisdiction, the appellant insists that the suit is upon the contract; that the patent is only collaterally involved, and that in such cases the State courts have jurisdiction. By section 711 of the United States Revised Statutes exclusive jurisdiction is given the Federal courts in all cases arising under the patent laws of the United States. Suits to recover royalties for the use of patents, suits for the specific performance of contracts for their use and suits on contracts governing the rights of the parties in the use of.a patented invention have been held not to be suits under the patent laws, and in such actions State courts have jurisdiction. (Pratt & Co. v. Paris Gas Light Co. 155 Ill. 531; affirmed 168 U. S. 255; Albright v. Teas, 106 U. S. 613; McMillan v. Bowers, 102 Fed. Rep. 494.) While the prayer of the bill, is based on the agreement, it is not claimed appellant per-, formed it. He bases his right upon the claim that he was the author of the invention, which Brown appropriated by procuring letters patent in his own name. Here it appears from the face of the bill that there is an actual dispute between the parties as to the validity of the patent. If Brown is not the inventor his patent is invalid. Appellant claims he was the author of the invention, while appellee claims it was Brown’s. Obviously, if appellant was not the author he would in no event be entitled to relief. The presumption is that the person to whom letters patent issue is the original and first inventor. (Seymour v. Osborne, 78 U. S. 516; Elizabeth v. Pavement Co. 97 id. 126.) It seems necessary to a determination of the conflicting claims to. determine the validity of the patent. The Supreme Court of the United States said in Excelsior Wood Pipe Co. v. Pacific Bridge Co. 185 U. S. 282: “There is a complete, distinction between a case and a question arising under the patent laws. The former arises when the plaintiff in his opening pleading,—be it a bill, complaint or declaration,— sets up a right under the patent laws as ground for a recovery. Of such the State courts have no jurisdiction.” Appellant sets up a right based upon the patent issued to Brown, and the determination of that claim cannot be made without deciding upon the validity of Brown’s patent. We can come to no other conclusion than that this is a case under the patent laws and that State courts have no jurisdiction.
We are furthermore of the opinion that if the superior court had jurisdiction appellant had a complete and adequate remedy at law, and the demurrer was properly sustained upon that ground. There is no complicated state of accounts existing between the parties. Appellant is not indebted in any manner to appellee, the adjusting of mutual accounts is not involved and the methods peculiar to courts of equity are not required to be resorted to. (Craig v. McKinney, 72 Ill. 305; County of Clinton v. Schuster, 82 id. 137; County of Cook v. Davis, 143 id. 151.) The indebtedness alleged to exist is a purely legal demand for the recovery of money under a contract, and it does not appear from anything alleged in the bill that appellant’s rights could not be as fully protected and enforced in an action at law as in a suit in equity.
Another special ground of demurrer was laches of appellant. The correspondence between the parties, made part of the bill, shows that in March, 1899, the Brown Hoisting and Conveying Machine Company wrote appellant its understanding of the agreement was, that if appellant procured a patent it would be for an invention broadly covering the combination embraced in the pig-iron handling and breaking machinery used in the appellant’s plant. The correspondence further shows the hoisting and conveying machine company, in addition to explaining that its understanding of the agreement was that the invention referred to in the agreement was -for a broad combination then in use in appellant’s plant, informed appellant that Brown would take out patents on the inventions perfected by him and which did not embrace the broad combination contemplated by the agreement. Appellant’s application was filed on June 14, 1899, for letters patent based upon seventeen claims. His application was rejected by the commissioner of patents upon the ground stated in the commissioner’s report or opinion that “the first twelve claims and 16 and 17 do not cover combinations,” also that six of the seventeen claims had been anticipated by Kennedy and mine of them by Brown. This opinion was rendered to appellant July 11, 1899, and he did not avail himself of any of the means provided by law to establish the validity of his claim for letters patent. Not until twelve years later, and after the death of Brown, was any notice given appellee of appellant’s claim or any proceeding- begun by him to establish his claim. The death of Brown would necessarily be a great disadvantage to appellee in defending and. decidedly advantageous to appellant in prosecuting his suit. There is no allegation in the bill which excuses or justifies the long delay. Whether the mere neglect of appellant to assert his claim with more diligence, in the absence of any circum- ■ stance arising which would prejudice appellee, would constitute laches need not be determined. Here the delay must be considered in conjunction with another circumstance,— the death of- Brown,—which would seriously prejudice the appellee in defending against appellant’s claim. The case seetos to us a proper one for the application of the equitable doctrine of laches, and upon that ground the demurrer was properly sustained and the bill dismissed. Morse v. Seibold, 147 Ill. 318; Thomas v. VanMeter, 164 id. 304; Winslow v. Leland, 128 id. 304; McLaurie v. Barnes, 72 id. 73.
•In our opinion the demurrer was properly sustained and the bill' dismissed. The judgment of the Appellate Court is affirmed.
Judgment affirmed.