BRIGGS
v.
UNITED SHOE MACHINERY COMPANY

U.S. | 1915-11-01
No. 638
239 U.S. 48 Supreme Court of the United States (1915) Caution
Also reported at: 60 L. Ed. 138 · 36 S. Ct. 6 · SCDB 1915-062 · 1915 U.S. LEXIS 1523
Cited by 50 cases

AI-generated. These summaries, headnotes, and key points are machine-generated and may contain errors or omissions. Always verify against the full opinion text below. Not legal advice.

Synopsis

Briggs sued United Shoe Machinery Company, a fellow citizen, seeking to enforce royalties reserved in a patent sale contract and to annul a competing patent issued to a third party. The Supreme Court affirmed dismissal for lack of federal jurisdiction, holding that a suit for royalties reserved upon the sale of a patent right does not constitute a suit arising under the patent laws, and that fraud allegations in patent procurement cannot confer jurisdiction since only the United States may bring such claims.

© FLexlaw, Inc. — AI-generated enrichments are proprietary. All rights reserved.

Opinion of the Court
Mr. Justice Van Devanter,

Memorandum opinion by

Mr. Justice Van Devanter,

by direction of the court.

Whether this suit between citizens of the same State is one arising under the patent laws is the only question presented by this direct appeal under Jud. Code, § 238. The District Court gave a negative answer to the question and dismissed the suit for want of jurisdiction.

The bill shows that its dominant and'ultimate object is to enforce payment of royalties reserved to the plaintiff by a contract whereby he sold to the defendant certain existing and contemplated patents for improvements in shoe-sewing machines, and that to clear the way for a recovery of all the royalties claimed it seeks the annulment of a patent for such an improvement issued to Andrew Eppler after the contract and then assigned to the defendant, and also an adjudication that the plaintiff is entitled to a patent for the improvement covered by the Eppler patent.

A suit for royalties reserved upon the sale of a patent right is not a suit arising under the patent laws. This is settled by repeated decisions. Albright v. Teas, 106 U. S. 613; Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 285; Geneva Furniture Co. v. Karpen, 238 U. S. 254, 259, and cases eited.

While the patent laws (Rev. Stat., §§ 4915,4918) permit an applicant for a patent whose application has been refused by the Commissioner of Patents, or by the Court of Appeals1 of the District of Columbia upon appeal from the Commissioner, to establish his right to receive a patent by a suit in equity, and also permit a patentee to maintain a suit in equity against the owner of an interfering patent to annul the latter, the present bill falls so far short of presenting a case within either section that it reasonably cannot be said to invoke the application of either. Recognizing that this is so, counsel for the plaintiff in his brief not only frankly concedes that he finds no statute in point, but endeavors to maintain the jurisdiction of the District Court by a reference to the general powers of Federal courts when sitting as courts of equity, evidently forgetting that such powers can be exerted only in cases otherwise within the jurisdiction of those courts as defined by Congress.

Some stress is laid in the brief upon portions of the bill charging fraud in the procurement of the Eppler patent, but as only the United States can maintain a bill to annul the patent on that ground (Mowry v. Whitney, 14 Wall. 434; United States v. Bell Telephone Co., 128 U. S. 315, 368; United States v. American Bell Telephone Co., 159 U. S. 548, 555) these allegations cannot affect the solution of the question of jurisdiction here presented.

Our conclusion is that this is not a suit arising under the patent laws.

Decree affirmed.

See § 9, act February 9, 1893,.c. 74, 27 Stat. 434.

Cases With Similar Vibessemantic neighbors from the corpus

Citator

Cited By (15 total)

  • Luckett v. Delpark, Inc., 270 U.S. 496 (U.S. 1926)
    …wn v. Shannon, 20 How. 55; Hartell v. Tilghman, 99 U. S. 547; Albright v. Teas, 106 U. S 613; Dale Tile Manufacturing [*503] Company v. Hyatt, 125 U. S. 46; Marsh v. Nichols, Shepard & Company, 140 U. S. 344; Briggs v. United Shoe Machinery Company, 239 U. S. 48. In Wilson v. Sandjord, supra, a bill in equity was filed in a federal circuit court setting forth complainant’s ownership of a patent, an assignment to. defendants of a license in consideration of five promissory notes, with a condition of reversi…
  • United States Ex Relatione the Baldwin Co. v. Robertson, 265 U.S. 168 (U.S. 1924)
    …be canceled except on suit of the United States. Mowry v. Whitney, 14 Wall. 434, 439; United States v. American Bell Tel. Co., 128 U. S. 315, 368, 370; United States v. American Bell Tel. Co., 159 U. S. 548, 555; Briggs v. United Shoe Machinery Co., 239 U. S. 48, 50. That is true; but a registration of a trademark may be canceled, and the purpose of Congress by § 9 of the Trade Mark Act was to give to defeated applicants in the Court of Appeals the same resort to a court of equity as was given to defeated a…
  • Monsanto Co. v. Rohm & Haas Co., 456 F.2d 592 (3d Cir. 1972)
    …ished in United States v. Bell Tel. Co., 128 U.S. 315, 9 S.Ct. 90, 32 L.Ed. 450 (1888), and the right was deemed exclusive United States v. American Bell Tel. Co., 159 U.S. 548, 555, 16 S.Ct. 69, 40 L.Ed. 255 (1895); Briggs v. United Shoe Machinery, 239 U.S. 48, 50, 36 S.Ct. 6, 60 L.Ed. 138 (1915); Carson Inv. Co. v. Ananconda Copper Mining Co., 26 F. 2d 651, 660 (9th Cir. 1928). Since 1915, however, our research discloses no Supreme Court case holding that the right to seek patent nullification has been…

Previewing 3 of 15 citing cases — full citator treatment, depth of discussion, and citing context are member features.

Join FLexlaw to unlock all legal intelligence

Authorities Cited

Full citator, related cases, and AI research tools

Open in FLexlaw