The Fair v. Kohler Die & Specialty Co.
228 U.S. 22
SCOTUS
1913
Check Treatment
Me. Justice Holmes

delivered the opinion of the court'.

This is а bill in equity brought by the appellee, an Illinois corporation, against The Fair, also an Illinois corporаtion, for an injunction against The Fair’s making and vending certain; patented gas heating devices, or selling such deviсes of the plaintiff’s manufacture at less than one dollar and a half each; for an account and for triple damages. The bill alleges that the plaintiff has. the sole, and exclusive right to make and sell the devicеs throughout the United States and that the defendant with full notice has sold and is selling the same without license . in violation оf the plaintiff’s right. . It then.goes on to, allege that the .plaintiff, when it sells, imposes the condition that the goods shall nоt be sold at less than one dollar and fifty cents, and attaches to the goods a notice to that *24 effect and that any salé in violation of the condition, or use of the article if so sold, will be an infringement of the patent. It further avers that the defendant obtained ‍‌‌‌​‌‌‌​​​‌‌‌‌​‌​‌​​‌‌‌‌‌​​​​‌‌‌​​‌​‌​‌‌‌‌‌​​​‌‌‍a stock of the devices with notice of the conditions and sold them for a dollar and a quarter each in infringement of the plaintiff’s rights under the patent.

The Fair , appearеd specially and pleaded that all the devices in question sold by it were purchased from the plaintiff by a jоbber, that the jobber paid the full price .to the plaintiff, that upon these facts there was no question arising undеr the patent or other laws of the United States, ánd that-the court had no jurisdiction of the case. The casе was set down for hearing on the plea, so that the foregoing allegations of fact must be taken to be true. Farley v. Kittson, 120 U. S. 303, 314. The court in deference to Victor Talking. Machine Co. v. The Fair, 123 Fed. Rep. 424, maintained its jurisdiction, and as the defendant did not answer within, the time allowed,^ took the bill as confessеd and made a decree for the plaintiff. The judge stated that he did not feel at liberty to give a formal certificate ‍‌‌‌​‌‌‌​​​‌‌‌‌​‌​‌​​‌‌‌‌‌​​​​‌‌‌​​‌​‌​‌‌‌‌‌​​​‌‌‍blit added what appears from the record, that the defendant did nothing except to file the аbove plea. The appeal is upon the question of jurisdiction alone. There, is no uncertainty or ambiguity and we are of opinion that the case is properly here. Petri v. Creelman Lumber Co., 199 U. S. 487, 492.

Obviously the plaintiff sued upon the patent law, so far as the purport and intent of the bill- is concerned. It .was a resident of the same State as-the dеfendant and could have had no other ground. In’ the earlier paragraphs of the bill it charged an infringement оf its patent rights in general terms, aiiddt sought triple damagés, which it could have done only by virtue, of the statute. It is true that-latеr it set up the. sale at a dollar and a. quarter as an infringement and that we may guess that this is the only one, although.it dоes not say so. But if that, is the plaintiff’s *25 only cause of action, still the plaintiff relies upon it as an •infringement and nothing еlse — so that, ‍‌‌‌​‌‌‌​​​‌‌‌‌​‌​‌​​‌‌‌‌‌​​​​‌‌‌​​‌​‌​‌‌‌‌‌​​​‌‌‍good or bad, the cause of action alleged is a cause of action under the laws of the United States!

Of course the party who brings a suit is master to decide what law he will rely upon and therefore does determine whether he will bring a ‘suit arising under’ the patent or other law of the United States, by his declaration or bill. That question cannot depend upon the answer, and accordingly jurisdiction cannot be conferred by the defence even when anticipated and replied to. in the bill. Devine v. Los Angeles, 202 U. S. 313, 334. Conversely, when the plaintiff bases his cause оf action upon an act of Congress jurisdiction cannot be defeated by a plea denying the merits ‍‌‌‌​‌‌‌​​​‌‌‌‌​‌​‌​​‌‌‌‌‌​​​​‌‌‌​​‌​‌​‌‌‌‌‌​​​‌‌‍of thе claim. It might be defeated, no doubt, in a case depending on diversity of citizenship by a plea to the citizеnship of parties. Interior Construction and Improvement Co. v. Gibney, 160 U. S. 217, 219. We are speaking of a case where jurisdiction is incident to a Federal statutory cause of. action. Jurisdiction is authority to decide the case either way. Unsuccessful as well as-successful suits máy be brought upon the act, and a. decision that a patent is bad, whether on the facts or the law, is as binding as оne that it is good. See Fauntleroy v. Lum, 210 U. S. 230, 235. No doubt if it should appear that the plaintiff was not really relying upon the patent law for .his alleged rights, or if the claim of right were frivolous, ‍‌‌‌​‌‌‌​​​‌‌‌‌​‌​‌​​‌‌‌‌‌​​​​‌‌‌​​‌​‌​‌‌‌‌‌​​​‌‌‍the case might be dismissed." In the former instance-the suit would not reаlly and substantially involve a controversy within the jurisdiction of the court, Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 287, 288, and in. the latter the jurisdiction wpuld not .be denied, except possibly in form. Deming v. Carlisle Packing Co., 226 U. S. 102, 109. But if the plaintiff, really makes a substantial claim under an act of Congress there is jurisdiction whеther the claim ultimately be held good or bad.

*26 Thus in Vicksburg Waterworks Co. v. Vicksburg, 185 U. S. 65, 68, it was pointed out that, while the certificate inquired whether a Fеderal question was involved upon the pleadings, and while, the counsel had argued the merits of the case, thе function of this court “is restricted to the inquiry whether, upon the allegations of the bill of complaint, assuming them to bе true in point of fact, a Federal question is disclosed so as to give the Circuit Court jurisdiction in a suit between citizеns of the same State.” For that reason the court-declined, to pass upon the validity of the contract the obligation of which was alleged to have been impaired. Ibid. 82. S. C., 202 U. S. 453, 458. Mercantile Trust & Deposit Co. v. Columbus, 203 U. S. 311, 322, 323. Knoxville Water Co. v. Knoxville, 200 U. S. 22, 32.

In this case the plea though purporting to go to the jurisdiction of the court merely means that the patent, law does not give a patentee a right to impose such a condition as the plaintiff attempted to impose upon second purchasеrs of the device. The plaintiff no doubt maintains that the law does give him that right, ánd that even if the alleged infringements arе confined to the acts admitted by the plea they are. infringements none the less. The .bill hardly can be confined to that claim, but if it were, it is made in good faith and is not frivolous, it is a claim of right under the patent law and the Circuit Court properly took jurisdiction of the case. Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 295. White v. Rankin, 144 U. S. 628, 635, 636, 639.

Decree affirmed.