Dickinson Tire & Machine Co. v. Dickinson

• Decision Date: 03 December 1928
• Docket Number: No. 28.,28.
• Citation: 29 F.2d 493
• Parties: DICKINSON TIRE & MACHINE CO. v. DICKINSON et al.
• Court: U.S. Court of Appeals — Second Circuit

29 F.2d 493 (1928)

DICKINSON TIRE & MACHINE CO. v. DICKINSON et al.

No. 28.

Circuit Court of Appeals, Second Circuit.

December 3, 1928.

William M. Silverman, of New York City, for appellant.

Clark, Reynolds & Hinds, of New York City (Roger Hinds, of New York City, of counsel), for appellees.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

SWAN, Circuit Judge (after stating the facts as above).

The first question is as to the jurisdiction of the District Court upon the removal. Although plaintiff made no motion to remand and raised no question of jurisdiction during the trial, it would be our duty to reverse the decree and direct that the case be remanded to the state court, if the suit were one not removable under the statutes. See Martin v. Snyder, 148 U. S. 663, 13 S. Ct. 706, 37 L. Ed. 602; Tennessee v. Union & Planters' Bank, 152 U. S. 454, 14 S. Ct. 654, 38 L. Ed. 511. We pass without examination the question whether the suit involved separable controversies against the two defendants, so as to justify removal on the ground of diversity of citizenship, and rest our decision upon section 256 of the Judicial Code (USCA tit. 28, § 371), which confers exclusive jurisdiction upon the federal courts "of all cases arising under the patent right, or copyright laws of the United States."

The nature of plaintiff's suit must be determined from the allegations of the bill of complaint. The Fair v. Kohler Die & Specialty Co., 228 U. S. 22, 25, 33 S. Ct. 410, 57 L. Ed. 716; Pratt v. Paris Gaslight & Coke Co., 168 U. S. 255, 259, 18 S. Ct. 62, 42 L. Ed. 458; Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 22 S. Ct. 681, 46 L. Ed. 910. The bill makes the usual allegations of a bill for patent infringement; it asserts title to the patents by assignment, plaintiffs exclusive right to manufacture and sell the patented articles, and defendants' infringement. It prays for an injunction and accounting. True, it demands other relief, which is not given in a patent suit, such as the appointment of a receiver and the cancellation of the conveyance by Dickinson to the corporate defendant. But the prayer for inappropriate relief does not change the character of plaintiff's bill.

The only cause of action asserted is the violation of plaintiff's rights under the patents; no defect in title is acknowledged, and no conveyance to plaintiff to complete its title is asked. The answer, it is true, asserts a revocation of any rights in the patents under plaintiffs agreement with Dickinson, and the controversy on the trial revolved about this issue. But this is no more than a denial of plaintiff's title. When the plaintiff bases his cause of action upon an act of Congress, jurisdiction cannot be defeated by a plea which merely denies the merits of the claim. As said in the Fair Case, supra, "jurisdiction is authority to decide the case either way." Were it otherwise, a decision that a patent was invalid would oust the court of jurisdiction to render it.

Upon the argument it was questioned whether an assignee may sue as owner of the patent when the assignment is made before the patent issued and the patent is subsequently issued to the assignor. Even if the question were to be answered in the negative, plaintiff's claim of right to do so would seem to present a case arising under the patent laws within the principles of the authorities above cited. But it has been conclusively settled that the equitable assignee under a recorded assignment may sue the assignor patentee for...