272 Mass. 465 | Mass. | 1930
These are actions of contract. They have been reported by the trial judge for determination of questions raised by denial of motions of the defendant to dismiss on the ground that the cases arose under the patent laws of the United States and were within the exclusive jurisdiction of courts of the United States.
It is alleged in all counts in both actions that the contracts in suit were made in October, 1905, by the plaintiff with a predecessor of the defendant to whose rights, business and assets the defendant has succeeded, and whose obligations and liabilities to the plaintiff the defendant has assumed and become bound to fulfill. Since nothing turns on this factor, the original contractor with the plaintiff and the defendant will hereafter be described indiscriminately as defendant. In each count in both actions are allegations of full performance by the plaintiff of his part of the contract and failure to perform by the defendant. In the first count in the declaration in the first action it is alleged that a contract was made between the parties whereby the plaintiff disclosed to the defendant certain inventions made by him and entered the employ of the defendant and the defendant agreed to pay wages to the plaintiff and in addition fair remuneration for said inventions in case it should use them, and that the inventions have been used by the defendant and have proved of great value and highly profitable. In the second count it is alleged that a contract was made'whereby the plaintiff assigned to the defendant certain inventions made by him and applications for letters patent therefor; that the defendant agreed diligently to prosecute these applications and to use its best efforts to obtain letters patent therefor, and if such inventions, or any of them, should prove patentable and useful, to pay the plaintiff fair remuneration; that the inventions were patentable and useful, but by reason of the failure of the defendant to perform its obligations under the contract patents have been refused. In the third count are allegations of a contract of employment, disclosure by the plaintiff to the defendant of certain specified inventions, agreement by the plaintiff to use his best efforts to invent and
This summary of the allegations of the several counts of the declarations shows that the causes of action, however
Jurisdiction is vested, in courts of the United States, exclusive of the courts of the several States, “Of all cases arising under the patent-right . . . laws of the United States.” The Judicial Code, approved March 3, 1911, c. 231, § 256, Fifth. 36 U. S. Sts. at Large, 1161. U. S. Const, art. 1, § 8. The decisive question for decision is whether these are “cases arising under the patent-right . . . laws of the United States” according to the true meaning and intent of those words in the quoted clause from the Judicial Code. The defendant concedes that the
“There is a clear distinction between a case and a question arising under the patent laws.” Pratt v. Paris Gas Light & Coke Co. 168 U. S. 255, 259. In New Marshall Engine Co. v. Marshall Engine Co. 223 U. S. 473 (affirming judgment in the same case in 203 Mass. 410) it was said at page 478: “The Federal courts have exclusive jurisdiction of all cases arising under the patent laws, but not
We are of opinion that this decision governs the cases at bar. The validity of patents appears to us to be less directly involved and attacked as to originality of invention in the cases at bar than in the Becher case. The flagrancy of the fraud in that case does not distinguish it in principle from
The defendant relies upon Forster v. Brown Hoisting Machinery Go. 266 111. 287. In our opinion that case is distinguishable. It there was held .that, although the suit was based on a contract, it was not claimed that the plaintiff had performed the contract; that the plaintiff could not resort to equity because he had complete remedy at law, and that the plaintiff was barred by loches. It would seem that what was said concerning the exclusive jurisdiction of the courts of the United States was hardly necessary to the decision. But however that may be, it cannot stand against the Becher case as controlling in the cases at bar.
The defendant lays hold of incidental expressions in certain opinions to the effect that if a plaintiff by his opening pleading makes it appear that some right or privilege under the patent laws will be defeated by one construction, or sustained by the opposite construction of those laws, or raises any question as to the validity of a patent, the case arises under the patent laws. Pratt v. Paris Gas Light & Coke Co. supra. Fair v. Kohler Die & Specialty Co. 228 U. S. 22. See Aronson v. Orlov, 228 Mass. 1, 6. Whatever weight is to be attached to such expressions, they are not relevant to the grounds of the present decision. As applied to the cases at bar, they do not shake the binding force of the Becher case. There the suit in the State court had immediate reference to particular letters patent and attacked the originality of the invention which appeared to be asserted and established on the very face of the letters patent. Moreover, as already pointed out, references in the declarations of the plaintiff to patent's are not essential elements of the causes of action set out and might be
Order denying motion affirmed.