HEALY
v.
SEA GULL SPECIALTY CO.
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The Supreme Court held that a district court has jurisdiction over a patent infringement case even when the plaintiff's complaint also invokes contractual claims, provided the infringement allegation is not frivolous and the plaintiff properly initiates the action in federal court. The Court reversed the lower court's dismissal, establishing that jurisdiction depends on the case as pleaded by the plaintiff and cannot be defeated by defenses or counterclaims that emerge during litigation.
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Mr. Justice Holmes delivered the opinion of the court.
This is a bill in equity brought by the appellants, alleging that Healy is the owner of patents for improvements in boxes and machines for making boxes, and that the Healy Box Corporation is the grantee of the exclusive right to make and use the machines and to make, use and sell the boxes containing the patented improvements. The bill next alleges that the defendant is infringing the patents and will continue to do so unless restrained. Then, anticipating a defence, it sets forth a license to the defendant, a breach of its conditions and a termination of the same. It adds that the license contained a stipulation that in case of any suit for infringement the measure of recovery should be the same as the royalty agreed upon for the use of the inventions, and another for the return of the machines let to the defendant while the license was in force. The bill prays for an injunction against making, using or selling the boxes or machines, for an account of profits received by reason of the infringement, for triple the damages measured as above stated, and for the surrender of the machines. The jurisdiction depended upon this being a case arising under the patent laws, and the District Court thinking that it was merely a matter of contract dismissed the bill. In our opinion its decision was wrong.
It may be that the reasoning of The Fair v. Kohler Die & Specialty Co., 228 U. S. 22, is more consistent with that of Mr. Justice Bradley’s dissent in Hartell v. Tilghman, 99 U. S. 547, 556 (a decision since explained and limited, White v. Rankin, 144 U. S. 628), than with that of the majority, but it is the deliberate judgment of the court and governs this case. As stated there, the plaintiff is absolute master of what jurisdiction he will appeal to; and if he goes to the District Court for infringement of a patent, unless the claim is frivolous or a pretence, the District Court will have jurisdiction' on that ground, even though the course of ,the subsequent pleadings reveals other more serious disputes. Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282. Jurisdiction generally depends upon the case made and relief demanded by the plaintiff, and as it cannot be helped, so it cannot be defeated by the replication to an actual qr anticipated defence contained in what used to be the charging part of the bill. For the same reason it does not matter whether the validity, of the patent is admitted or denied.
As appears from the statement of it, the plaintiffs’ case arose Under the patent law. It was not affected by the fact that the plaintiffs relied upon a contract as fixing the mode of estimating damages or that they sought a return of patented machines to which if there was no license they were entitled. . These were incidents. The essential features were the allegation of an infringement and prayers for an injunction, an account of profits and triple damages —the characteristic forms of relief granted by the patent law. The damages were grounded on the infringement,- and the contract was relied upon only as furnishing the mode in which they should be ascertained.
Decree reversed.
Cases With Similar Vibessemantic neighbors from the corpus
Citator
Cited By (30 total)
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Lambert Run Coal Co. v. Baltimore & Ohio R.R. Co., 258 U.S. 377 (U.S. 1922)…a like suit originally, brought there have had jurisdiction. Courtney v. Pradt, 196 U. S. 89, 92; American Well Works Co. v. Layne & Bowler Co., 241 U. S. 257, 258.1 To the situation,here presented, [*383] cases like Healy v. Sea Gull Specialty Co., 237 U. S. 479, relied upon by appellant, have no application. For, while it is true , that a plaintiff by his first pleading determines what right he will sue'op. and that* the defenses* set up either anticipatorily by him or in due course by the defendant, can n…
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Merrell Dow Pharms. Inc. v. Thompson, 478 U.S. 804 (U.S. 1986)…to be realized that Mr. Justice Holmes’ formula is more useful for inclusion than for the exclusion for which it was intended”). Jurisdiction may not be sustained on a theory that the plaintiff has not advanced. See Healy v. Sea Gull Specialty Co., 237 U. S. 479, 480 (1915) (“[T]he plaintiff is absolute master of what jurisdiction he will appeal to”); The Fair v. Kohler Die & Specialty Co., 228 U. S. 22, 25 (1913) (“[T]he party who brings a suit is master to decide what law he will rely upon”). See also Uni…
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Luckett v. Delpark, Inc., 270 U.S. 496 (U.S. 1926)…lifying Wilson v. Sandford are White v. Rankin, 144 U. S. 628; Excelsior Wooden Pipe Company v. Pacific Bridge Company, 185 U. S. 282; Henry v. Dick Co., 224 U. S. 1; The Fair v. Kohler Die Company, 228 U. S. 22; Healy v. Sea Gull Specialty Company, 237 U. S. 479, and Geneva Furniture Co. v. Karpen, 238 U. S. 254. We think that none of these cases shakes the authority of Wilson v. Sandford upon the point here in question, or can be used to sustain the present bill. The case which has been “ blown upon ” is t…
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Join FLexlaw to unlock all legal intelligenceAuthorities Cited
- The Fair v. Kohler Die & Specialty Co., 228 U.S. 22 (U.S. 1913)
- Excelsior Wooden Pipe Co. v. Pac. Bridge Co., 185 U.S. 282 (U.S. 1902)
- Hartell v. Tilghman, 99 U.S. 547 (U.S. 1878)
- White v. Rankin, 144 U.S. 628 (U.S. 1892)