James Wilson, Appellant v. George Sanford and Robert Musgrove

• Decision Date: 01 December 1850
• Citation: 13 L.Ed. 344,51 U.S. 99,10 How. 99
• Parties: JAMES G. WILSON, APPELLANT, v. GEORGE A. SANFORD AND ROBERT G. MUSGROVE
• Court: U.S. Supreme Court

51 U.S. 99

10 How. 99

13 L.Ed. 344

JAMES G. WILSON, APPELLANT, v. GEORGE A. SANFORD AND ROBERT G. MUSGROVE.

December Term, 1850

THIS was an appeal from the Circuit Court of the United States for the District of Louisiana.

The appellant had filed his bill in the court below, setting forth a patent to William Woodworth, dated December 27th, 1828, for a planing machine; also an extension, in 1842, of said patent for seven years, granted to William W. Woodworth, administrator of the patentee; an assignment of all right and interest in said extended patent throught the United States (except Vermont) to complainant, Wilson; and a license from Wilson to the defendants to use one machine upon payment

of $1400, as follows, viz., $250 in cash, and the remainder in nine, twelve, eighteen, and twenty-four months, for which promissory notes were given, dated 23d April, 1845, one for $150, and four for $250 each.

The license was made an exhibit in the case, which, after setting forth the consideration of $1400 above mentioned, and the promissory notes for part thereof, contained the following provision:—'And if said notes, or either of them, be not punctually paid upon the maturity thereof, then all and singular the rights hereby granted are to revert to the said Wilson, who shall be reinvested in the same manner as if this license had not been made.'

The first two of said notes were not paid when they fell due, payment having been demanded and refused before the filing of the bill. The bill further insisted, that the license was forfeited by the failure to pay the notes, and that the licensor was fully reinvested at law, and in equity, with all his original rights. That the defendants, nevertheless, were using the machine, and thus were infringing the patent. Prayer for an injunction, pendente lite, for an account of profits since the forfeiture of the license, for a perpetual injunction, for a reinvestiture of title in complainant, and for other and further relief.

The defendants demurred to the whole bill, and also (saving their demurrer) answered the whole bill. They admitted all the facts alleged; and averred, on their part, that the contract set forth in the bill had been modified and varied by a new contract, which the complainant had broken, and that the respondent, being in the lawful use of a planing-machine at the expiration of the patent, had the right to use such machine without license, and consequently that the notes were without consideration.

There was a general replication, and the cause was heard first on bill and demurrer, and afterwards (the demurrer having been overruled) on bill, answer, and replication. Whereupon the bill was dismissed, with costs, and an appeal to this court taken.

The cause was argued by Mr. Seward, for the appellant, no counsel appearing for the appellees. As, however, the appeal was dismissed for want of jurisdiction, the argument of Mr. Seward, which was wholly upon the merits, is not inserted.

Mr. Chief Justice TANEY delivered the opinion of the court.

The bill in this case was filed by the appellant against the appellees in the Circuit Court of the United States for the District of Louisiana.

The object of the bill was to set aside a contract made by the appellant with the appellees, by which he had granted them permission to use, or vend to others to be used, one of Woodworth's planing-machines, in the cities of New Orleans and Lafayette; and also to obtain an injunction against the further use of the machine, upon the ground that it was an infringement of his patent rights. The appellant states that he was the assignee of the monopoly in that district of country, and that the contract which he had made with the appellees had been forfeited by their refusal to comply with its conditions. The license in question was sold for fourteen hundred dollars, a part of which, the bill admits, had been paid. The contract is exhibited with the bill, but it is not necessary in this opinion to set out more particularly its provisions.

The appellees demurred to the bill, and at the final hearing the demurrer was sustained, and the bill dismissed. And the case is brought here by an appeal from that decree.

The matter in controversy between the parties arises upon this contract, and it does not appear that the sum in dispute exceeds two thousand dollars. On the contrary, the bill and contract exhibited with it show that it is below that sum. An appeal, therefore, cannot be taken from the decree of the Circuit Court, unless it is authorized by the last clause in the seventeenth section of the act of 1836.

The section referred to, after giving the right to a writ of error or appeal in cases arising under that law, in the same manner and under the same circumstances as provided by law in other cases, adds the following provisions:—'And in all other cases in which the court shall deem...