ALBRIGHT
v.
TEAS.
Supreme Court of United States.
*616 Mr. Anthony Q. Keasbey and Mr. Joseph C. Clayton for the appellants.
Mr. Walter H. Smith for the appellee.
MR. JUSTICE WOODS delivered the opinion of the court, and, after stating the case as above, proceeded as follows:
The contention of the appellants is that the case is one "arising under the ... laws of the United States," and was, therefore, properly removable from the State to the United States courts, and should not have been remanded.
It is clear, from an inspection of the bill and answers, that the case is founded upon the agreement in writing between the appellee and the appellants Albright and Cahoone, by which the former, for a consideration therein specified, transferred to the latter his interest in certain letters-patent. The suit was brought to recover the consideration for this transfer, and was not based on the letters-patent.
The appellants insist, however, that evidence was taken in the cause by the appellee for the purpose of proving that they were using his patented improvements in the manufacture of goods for which they paid him no royalty, and which they contended did not embody the improvements covered by his patents; that the testimony developed a controversy on the question whether the goods which they manufactured under other patents owned by them were or were not infringements on his patents; consequently, that questions of infringement and of the construction of the claims of his patents were necessarily involved in the case, and, therefore, it was one arising under the patent laws of the United States.
We search the bill of complaint in vain to find any averments raising these questions. It makes no issue touching the construction of the patents granted the appellee, or their validity, or their infringement. The only complaint made in the bill is that the appellants were fraudulently excluding the appellee from an inspection of their books of account, and refusing to pay him the sums due for royalties under his contract *617 And the prayer of the bill was for a discovery, an account of what was due the appellee under his contract, and a decree for the amount found to be due him.
On the face of the bill, therefore, the case is not one arising under the patent laws of the United States. Wilson v. Sandford, 10 How. 99.
The testimony on which the appellants rely to show the jurisdiction of the Circuit Court is not before us; but conceding that it discloses the controversy which they assert that it does, the question arises, Does this fact give the courts of the United States jurisdiction of the case?
Tompkins is the only one of the appellants who questions the validity of the appellee's patents. But he is not a party to the contract between the appellee and Albright and Cahoone, and no relief is prayed against him by the bill; and though he says in his answer that he had always disputed the value and validity of those patents, he raises no issues thereon. The fact that he is made a party defendant to the bill can, therefore, have no effect on the question in hand.
In passing on the question of jurisdiction, the case is to be considered as if Albright and Cahoone were the only defendants.
The appellee, before the commencement of the suit, sold and transferred to Albright and Cahoone all his title and interest in the inventions covered by his patents. The transfer was absolute and unconditional. No right, therefore, secured to the appellee in the patent by any act of Congress remained in him. He had no right to prosecute any one for infringements of his patents, or to demand damages therefor, or an account of profits.
He was entitled to the royalties secured by his contract, and nothing more. And the only question raised by the bill of complaint and the answer of Albright and Cahoone was simply this: What is the sum due the appellee from Albright and Cahoone for his royalties under his contract? In ascertaining this amount, it, of course, became necessary to inquire what goods were manufactured by the appellants under the patents of the appellee. In prosecuting this inquiry, an incidental question might arise, namely, What goods were manufactured *618 by the appellants under other patents of which they were the owners or licensees? But this incidental and collateral inquiry does not change the nature of the litigation. The fact that Albright and Cahoone had licenses to use other patents under which they were manufacturing goods, does not give them the right to litigate their cause in the United States courts because certain goods, which they asserted were made under the other patents, the appellee asserted were really made under his. The suit, notwithstanding the collateral inquiry, still remains a suit on the contract to recover royalties, and not a suit upon the letters-patent. It arises solely upon the contract, and not upon the patent laws of the United States.
In fact, it does not appear that there is any dispute whatever between the parties in reference to the construction of the patents of the appellee. The controversy between them, as stated by the appellants themselves, is whether certain goods manufactured by them embody the invention covered by the appellee's patents. This does not necessarily involve a construction of the patents. Both parties may agree as to what the patented invention is, and yet disagree on the question whether the invention is employed in the manufacture of certain specified goods. The controversy between the parties in this case is clearly of the latter kind.
The case cannot, therefore, be said to be one which grows out of the legislation of Congress. Neither party asserts any right, privilege, claim, protection, or defence founded, in whole or in part, on any law of the United States.
We are, therefore, of opinion that, even if we go outside the pleadings and look into the testimony, the case is not one arising under the laws of the United States, and, consequently, that the courts of the United States had no jurisdiction to entertain it.
The cases adjudged by this and other courts of the United States sustain this conclusion. In the case of Wilson v. Sandford, ubi supra, the object of the bill was to set aside a contract made by the appellant with the appellees, by which he had granted them permission to use, and vend to others to be used, one of Woodworth's planing-machines in the cities of New Orleans and Lafayette, and also to obtain an injunction against *619 the further use of the machine, on the ground that it was an infringement of his patent-rights. Upon this cause the court, speaking by Mr. Chief Justice Taney, said: "The dispute in this case does not arise under any act of Congress, nor does the decision depend upon the construction of any law in relation to patents. It arises out of the contract stated in the bill, and there is no act of Congress providing for or regulating contracts of this kind. The rights of the parties depend altogether upon common law and equity principles."
The case of Hartell v. Tilghman, 99 U.S. 547, is also in point. In that case Hartell, the complainant, alleged that he was the original patentee and inventor of a process for cutting and engraving stone, glass, metal, and other hard substances by what is known as the sand-blast process; that the defendants had paid him a considerable sum for machines necessary in the use of his invention, and had also paid him during several months the royalty which he asked for the use of the invention described in and secured by his patent; that the defendants refused to do certain other things, which he charged to have been a part of the consideration of the contract between them, whereupon he had forbidden them further to use his invention, and that they had disregarded this prohibition. The bill prayed for an injunction, an account of profits, and damages.
The defendants admitted the validity of the patent, their use of it, and their liability for its use under their contract with the complainant, and offered to perform all that the contract required them to perform. All the parties were citizens of the same State.
Upon this case the question of the jurisdiction of the United States courts was raised; and this court, after a review of several cases bearing on the subject, held that the suit was not one arising under the laws of the United States, and that the Circuit Court had no jurisdiction of the case. The decree was reversed, and the cause remanded with directions to dismiss the bill.
The argument against the jurisdiction in the case under consideration is stronger than in the two cases above referred to. In each of these cases the object of the complainant in filing *620 the bill was to go behind the agreement under which the defendant had contracted for the right to use the complainant's invention, and to obtain an injunction against the defendant as an infringer. In this case, the appellee admits the contract to be in force, and simply seeks to compel its performance.
The following cases, cited by this court in Hartell v. Tilghman, are in accord with the views we have expressed: Goodyear v. India-Rubber Company, 4 Blatchf. 63; Merserole v. Union Paper Collar Co., 6 id. 356; Blanchard v. Sprague, 1 Cliff. 288; Hill v. Whitcomb, 1 Holmes, 317.
From the conclusions reached by us, it follows that the decree of the Circuit Court remanding the cause to the State court must be
Affirmed.