Hartell v. Tilghman

APPEAL from the Circuit Court of the United States for the Eastern District of Pennsylvania.

The facts are stated in the opinion of the court.

Mr. William Henry Rawle and Mr. M. D. Connolly for the appellants.

The court below had no jurisdiction. The parties were all citizens of the same State. The suit was founded upon a contract between them, and did not arise under a statute of the United States. Wilson v. Sandford, 10 How. 99; Hartshorn v. Day, 19 id. 211; Slemmer's Appeal, 58 Pa. St. 164; Blanchard v. Sprague, 1 Cliff. 288; Goodyear v. Day, 1 Blatchf. 565; Merserole v. Union Paper Collar Co., 6 id. 356; Goodyear v. Union India-rubber Co., 4 id. 63; Burr v. Gregory, 2 Paine, 426; Hill v. Whitcomb, 1 Holmes, 317; Pulte v. Derby, 5 McLean, 328; Curtis, Patents, sect. 496.

When the defendant's original use of a machine or a process for which letters-patent have been granted to another is unlawful, he is prima facie an infringer, and the Federal jurisdiction attaches to prevent a violation of a right secured by the laws of the United States. But where such use is lawful, he is prima facie not an infringer, and that jurisdiction does not attach. The rights involved rest solely upon contract, and it is only when a breach of it is shown that the continued exercise of them can be enjoined.

Mr. George Harding, contra.

The bill is founded on letters-patent. The relief sought is an injunction, a discovery, and an account, and not the rescission, the enforcement, or the construction of a contract of license: The court below therefore had jurisdiction. Brooks v. Stolley, 3 McLean, 523; Woodworth v. Weed, 1 Blatchf. 165; Wilson v. Sherman, id. 538; Woodworth v. Cook, 2 id. 160; Wilson v. Sanford, 10 How. 99; Pulte v. Derby, 5 McLean, 336; Day v. Hartshorn, 3 Fish. 32; Goodyear v. Congress Rubber Company, 3 Blatchf. 453; Judson v. Union Rubber Company, 4 id. 66; Bloomer v. Gilpin, 4 Fish. 54; Blanchard v. Sprague, 1 Cliff. 288; Merserole v. Union Paper Collar Co., 3 Fish. 483; Littlefield v. Perry, 21 Wall. 205; Magic Ruffle Company v. Elm City Company, 13 Blatchf. 157.

MR. JUSTICE MILLER delivered the opinion of the court.