Elmer v. Pennel

The power of determining the; validity of a patent is exclusively confided to the Circuit Courts of the United States. In a suit upon a note given for the conveyance of a patent right, proof that such patent was void for being an infringement of a prior one, is not admissible, without that fact has been determined by a Court of competent jurisdiction. Nor, in defence of such suit, can a mere hypothetical proposition, containing no issuable fact, be allowed to be proved.

On Report from Nisi Prius, Howard, J., presiding. Assumpsit, upon a promissory note of four hundred dollars. It was admitted that the note was given in payment for a bond for the conveyance of a patent right in the Leavens’ Sash and-Blind Machine, (so called.) The defendant contended, that the note was without consideration, and offered to prove: — 1st. That Leavens’ patent is void by reason of its being an infringement on Woodworth’s patent. 2d. That if the terms of the Leavens’ patent and specifications, do not include a combination of yielding pressure to prevent the substance to be planed from being drawn up towards the axis of the planing cylinder while the knives are cutting from the planed to the unplaned surface, together with rotating planes, that the patent right is of no value, and does not embrace any new and useful invention or improvement. If the facts offered to be proved would constitute a defence to the action, and it is competent for defendant in this action to go into the proposed defence, the cause was to stand for trial; otherwise a default to be entered. 1. All actions, suits, controversies and cases arising under any law of the United States, granting or confirming to inventors the exclusive right to their inventions or discoveries, are originally cognizable, as well in equity as at law, in the Circuit Courts of the U. S., or in any District Court having the powers and jurisdiction of a Circuit Court. U. S. Statutes at large, vol. 5, c. 357, § 17; 1 Curtis’ Com. §§ 128,131, 139. 2. The Courts of this State have no jurisdiction over the question whether the Leavens’ patent is, or is not, an infringement of the Woodworth’s patent, and in the absence of power to determine that question cannot entertain the defence under the first offer of proof. Law’s U. S. Courts, p. 156; Parsons v. Barnard, 7 Johns. 144. 3. The jurisdiction conferred by the Acts respecting inventions, copyrights, &c., embraces all cases without regard to the character of the parties, or the amount in controversy. Conkling’s Treatise, ed. 1842, p. 64. This jurisdiction extends to all cases at law and equity, and it seems to be the better opinion that the jurisdiction is exclusive, the State Courts having no authority over a suit for the infringement of a patent or to declare a patent void. Law’s U. S. Courts, 156; Curtis on Patents, 452; 1 Kent’s Com., 382; Story’s Com. on the Constitution. Before a defence of this kind can be available, the patent must be declared void. The bond is then a sufficient consideration for the note. Our Courts cannot do indirectly what they have no authority to do directly. 4th. The second offer of proof is not to show that the Leavens’ patent is worthless, but is hypothetical in form and substance, and cannot be entertained as a direct proposition. The utmost that can be- made of -it, is, that defendant offers to prove, that if the Leavens’ patent does not include a certain mechanical combination, then it does not embrace any new and useful invention, but he does not allege or offer to prove, that it does not embrace the very'combination which he says it must embrace to render it valuable, and for aught appears to the contrary, it does embrace it, and, therefore, is valuable according to the theory of the offer of proof. 5th. But it would not avail the defendant to amend this offer of proof and substitute for it a positive affirmation. The matter would then belong to the Circuit Court, under the rules prescribed by the Act of Congress. U. S. Statutes at large, vol. 5, c. 357, § § 15 and 17. 6th. But the first offer of proof is not sufficiently comprehensive to constitute a defence, even if the question of infringement is cognizable by a State Court. So far as appears, the proof may be for a partial infringement only, in which case, so much as is not an infringement is good and valid. U. S. Statutes at large, vol. 5, c. 46, § 9; Peterson v. Wooden, 3 McLane’s C. O. R.,. 248; Statute of U. S., March 3, 1837. maintained, that he only wished to show that the note was given for an article of no value, that the note was without consideration. That if this defence was not open to him, he was remediless, he could not bring an issue in the U. S. Court. His only chance was here. But if the fact that letters patent had issued, would prevent a jury from, finding it an infringement on a prior one, then it was clearly competent for the defendant to show in defence the proposal under his second proposition. The note was given for a right, and there could be no objection in a State Court to showing it was of no value. It was competent for the defendant to show that a consideration appearing to be valuable and sufficient, in fact, turned out to be wholly false, and a mere nullity. 1 Pars. 385. That the consideration of the note was the right to sell a right, and that defendant only wished to show this right was of no value. Here is no attack upon the patent, nor to show that it was an infringement; we only propose to show it to be worthless. In doing this, no exclusive jurisdiction of the federal courts is ousted, nor any exclusive rights granted by the U. S., denied or controverted.