35 F. 369 | U.S. Circuit Court for the District of Western Pennsylvania | 1888
Nicholas J. Keller, one of the defendants, the grantee and exclusive owner of reissued letters patent No. 6,598, for an improvement in sand and gravel separating machines, by an instrument of writing by him executed, bearing date March 31, 1883, and recorded in the patent-office on April 2, 1883, assigned the one-half of said letters patent (subject to certain outstanding licenses) to Thomas B. Williams, the plaintiff'. A fter the assigning clause the instrument proceeds in the words following;
“This assignment is made and accepted upon the distinct understanding and agreement between the parties thereto that neither the said Keller nor the said Williams is to make any transfer of his respective interest in said patent, nor to grant any license to use the same, without the written consent of the other; and further that neither of said partios shall build more than one boat each with the said patented improvement upon it, without the written consent of the other; and the boat each is permitted so to build is to be used only by said party as an individual, and not as a member of any firm or copartnership, without the written consent of the other party.”
The bill recites the invention of said improvement by Keller; the grant of the original patent to him; the surrender thereof, and the grant of the reissue; and the said instrument of writing of March 31, 1883. The bill affeges and the answer admits that the defendant, the Star Sand
The answer, in which all the defendants join, admits that Keller was the first and original inventor of said improvement, the. grant to him •of the original letters patent, the due surrender thereof, the grant to him •of the reissue, and the validity of the same, the execution by Keller of the written instrument of March 31,1883, and the association as charged in the bill of the defendants as the Star Sand Company, Limited. The ■answer further admits that the Star Sand Company, Limited, owns and operates'two boats, viz., the Hippopotamus and Genii, equipped with the patented machine, 'the ownership of which boats with their patented •improvements the company acquired from Keller; and that under a contract with Keller the company takes the entire “lift” of the Star, a boat owned by Keller, and equipped with the patented improvement, which boat was built by him under the privilege expressly reserved to him by the terms of the written instrument of March 31, 1883; and the answer .sets up that by a contemporaneous oral agreement entered into between Keller and Williams the Hippopotamus and Genii were excluded from the limitations of said instrument.
The case is now before us upon the pleadings and proofs. We will not, however, enter upon a discussion, or express any opinion as to the merits of the controversy; because, after a careful consideration of the .subject, we have reached the conclusion that the case does not arise under the patent laws, and that the bill must be dismissed for want of jurisdiction. Wilson v. Sandford, 10 How. 101; Hartell v. Tilghman, 99 U.
There is no question in the case depending upon the construction or effect, of the patent laws. True, section 4898, Rev. St., enacts that “every patent, or interest therein, shall be assignable in law by an instrument of writing,” and provision is made for recording such “assignment, grant, or conveyance” in the patent-office for the purpose of notice to subsequent purchasers or mortgagees. But a collateral agreement between assignor and assignee, such as we have hero, restrictive of the power to dispose of their respective interests in the patent, and governing their rights in the use of the invention, whether incorporated in the instrument of assignment or not, is not provided for or regulated by section 4898, or by any act of congress. That the rights of the parties under such contracts depend altogether on common-law and equity principles, is the declared doctrine of all the above-cited decisions of the supreme court.
I jet a decree be drawn dismissing the bill for want of jurisdiction, with costs.
SOTE.
Patents— JYpisdiction oi? State and Ekdekav Covets. Plaintiff assigned to defendant one-third of the right to an invention. The patent-office divided the application for tlie patent into three applications for as many inventions. Held, that the question whether this subdivision divested defendant of Ms interest in one of the patents issued was purely one of patent law, of which the circuit court of the United States liad jurisdiction. Puetz v. Bransford, 32 Fed. Rep. 318. On application for an injunction t.o prevent defendant from assigning a patent, held, that if complainant’s case were founded solely upon some contract with defendant, it did not arise under the patent laws, and the circuit court of the United States would have no jurisdiction. Watch-Case Co. v. Leach, ante, 2.
In Store-Service Co. v. Clark., (N. Y.) 3 N. E. Rep. 335, Miller, L, says: “It is very-apparent that cases may arise lipón contracts relating to patents and their validity, which are especially within the power and jurisdiction of the state courts; but it by no means follows necessarily that this jurisdiction confers upon the state courts the right to adjudicate and determine questions arising as to infringements made upon rights and privileges -which are secured by patents issued by the government. The interpretation of the contract, the effect to be given to its various parts, and even the right to the patent, may well be the subject of consideration within the courts of the state; while any interference beyond this is in contravention of the general rule that in such an action the jurisdiction rests exclusively within the courts of the United States..”’ See, also, Manufacturing Co. v. Reinoehl, (ST. Y.) 6 N. E. Rep. 204.