Elmer v. Pennel

Rice, J. The execution of the note in suit was admitted, but the defendant contended that it is without consideration and void, and offered to prove — 1st. That the 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. It is not alleged, that the patent referred to, a bond to convey an interest in which is the consideration for the note in suit, has been declared void by any Court, nor that — 434 — it has been adjudged to be an infringement upon the Wood-worth patent. Section 17 of the Act of Congress, passed July 4, 1836, provides that 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, shall be originally cognizable, as well in equity as at law, by the Circuit Courts of the United States, or by any District Court having the powers and jurisdiction of a Circuit Court. This jurisdiction embraces all cases *both at law and in equity arising under the patent laws and the Acts to protect copyrights, without regard to the character of the parties, or the amount in controversy. Oonkling’s Treat, p. 65. As the judicial power of the United States extends to all cases in law and equity, arising under the laws of the United States, and as the Acts of Congress on the subject of patent rights, has declared, that the suits for the infringement of them shall be brought in the Circuit Courts of the United States, and gives those Courts power, in such cases, to declare the patent void, the State Courts, have, of course, no jurisdiction in the matter. Parsons v. Barnard, 7 Johns. 144. It seems to be the better opinion, that the jurisdiction (of the United States Courts) is exclusive, and that the State Courts cannot entertain a suit for the infringement of a patent, or to declare a patent void. Law’s U. S. Courts, p. 156; Curtis on Patents, 452. The same doctrine is declared in 1 Curtis’ Com. § § 128, 131, 139. The case of Dickinson v. Hall, 14 Pick. 217, was decided on the ground that the patent right, for which the note in suit was given, was not useful for any beneficial purpose. There is no law in this State giving our Courts jurisdiction over cases arising under the patent laws of the United States. — 435 — If the issue presented by the first offer of the defendant were directly before the Court, it has no authority to decide it, and it would, therefore, not be entertained. Much less could the validity of a patent be tried and determined collaterally. The patent must be deemed to be valid until it has been adjudged to be void in whole or in part by a Court competent to try that issue. The evidence offered cannot avail the defendant. The second offer was purely hypothetical. It docs not contain a proposition to prove any material issuable fact, but only a collateral theory, which theory, if proved, would constitute no defence to this action. A default must be entered. Appleton, J., dissenting.