American Solid Leather Button Co. v. Empire State Nail Co.

• Decision Date: 12 November 1891
• Citation: 47 F. 741
• Parties: AMERICAN SOLID LEATHER BUTTON CO. v. EMPIRE STATE NAIL CO.
• Court: U.S. District Court — Southern District of New York

47 F. 741

AMERICAN SOLID LEATHER BUTTON CO. v. EMPIRE STATE NAIL CO.

United States Circuit Court, S.D. New York.

November 12, 1891

Rowland Cox, for complainant.

Witter & Kenyon, for defendant.

BROWN J.

The defendant is the holder, through several mesne assignments of a patent on a leather furniture nail head, applied for November 2, 1881, and issued September 27, 1887, to J. Wilson McCrillis, assignee of the inventor, Thomas F. N. Finch. The complainant claims to be the equitable owner of the patent by virtue of a written agreement made by its assignors on February 1, 1881, with Latimer B. N. Finch, a son of the inventor. The action, originally brought in the supreme court of this state, was instituted in order to compel the defendant to assign the patent to the complainant, and to enjoin the defendant from instituting suits to obstruct the plaintiff's customers in their use of the patent. The complainant alleges that the defendant and its assignors, at the time of taking their several assignments, had notice of the complainant's prior rights. The cause, before answer was removed to this court, upon the petition of the defendant, alleging that the matter in dispute exceeded $2,000; that the complainant's agreement had never been recorded in the patent-office; that the defendant had no notice of the complainant's rights or claims, but was a purchaser of said patent for a valuable consideration without notice; and that the complainant's claim was void as to the defendant, under section 4898, Rev St. U.S., because the defendant, as a bona fide purchaser for a valuable consideration, without notice, was within the protection of that statute. A motion to remand is made on the ground that no federal question is involved.

Upon examination of the elaborate briefs submitted, I remain of the opinion, expressed at the hearing of the motion, that the cause should not be remanded, for the reason that the defendant invokes in its defense, or as a part of its defense, the provisions of Rev. St. U.S., above stated, and because the decision of the cause will involve a construction of that statute. No doubt the mere fact that a patent or patent-rights are the subject-matter of the action is not of itself a sufficient ground for removal to a federal court, where no provision of the United States Constitution or United States statutes is invoked or brought in question on either side, as in actions on a contract in relation to the use of a patent, the validity of which is not questioned, where the relief sought is simply in respect to the performance or violation of the contract. Albright v. Teas, 106 U.S. 613, 1 S.Ct. 550; Hartell v. Tilghman, 99 U.S. 547; Trading Co. v. Glaenzer, 30 F. 387; Wren v. Annin, 34 F. 435; Williams v. Star Sand Co., 35 F. 369. This action is not of so limited a nature.

Section 4898, which the defendant invokes, provides as follows:

'Every patent, or any interest therein, shall be assignable in law by an instrument in writing. * * * An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration without notice, unless it is recorded in the patent-office within three months from the date thereof.'

The complainant contends that this section has nothing to do with the case, inasmuch as the assignment under which it claims is contained in the provisions of an agreement made before the patent was applied for. It is said that this agreement could not be recorded, or, if recorded, would be without...