UNITED STATES SUPREME COURT DECISIONS ON-LINE

To constitute an action one arising under the patent right laws of the United States, the plaintiff must setup some right, title or interest under the patent laws, or at least make it appear that some right or privilege under those laws will be defeated by one construction or sustained by the opposite construction of these laws.

When a state court has jurisdiction both of the parties and the subject matter as set forth in the declaration, it cannot be ousted of such jurisdiction by the fact that, incidentally to his defense, the defendant claims the invalidity of a certain patent.

This was an action in assumpsit upon the common counts by the persons constituting the firm of Henry Pratt & Co. to recover of the Paris Gaslight & Coke Company the agreed consideration of $4,850 for manufacturing and setting up at its works, in the City of Paris, Edger County, Illinois, an apparatus for the manufacture of water gas in accordance with certain patents granted to Pratt and Ryan, April 22, 1884, and April 12, 1887, the component parts of said apparatus being set forth in the contract.

Defendant pleaded the general issue, and, in addition thereto, that the cause of action arose under a written contract, by which the plaintiffs agreed to keep the defendant harmless against any suits which might be brought against it for the infringement of any patents, and, if any such were brought, to defend the same at their own expense, further averring that the patents to Pratt and Ryan were void, and an infringement upon certain patents which had been granted to Springer and Lowe, that plaintiffs had not kept defendant harmless from suits for infringement, as provided for in such contract, and had not defended the same at their expense, but that a suit had been begun against defendant by the National Gaslight & Fuel Company in the Circuit Court of the United States for the Southern District of Illinois for clubjuris

Page 168 U. S. 256

an infringement of the Springer patent, that defendant requested plaintiffs to defend it, which they had agreed to do, but that they wholly refused to defend it, and said suit is still pending; that defendant was compelled to, and did at once, quit using the apparatus by reason of such suit, and has wholly ceased to use it.

The third plea averred in substance that the plaintiffs obtained the contract upon false and fraudulent representations that their patents were not infringements upon any other patents, which representations the plaintiffs knew to be untrue; that plaintiffs further represented that the National Gas Light & Fuel Company had begun a suit against them for an infringement of the Springer patent, and had found that they had no claim, and assured plaintiffs that no suit would be brought against defendant by the gas light and fuel company, nor by anyone else, and that the company had abandoned all claim that plaintiffs' patents were an infringement upon theirs, which representations were false and fraudulent, to the knowledge of the plaintiffs, who had before that time been notified by the gas light and fuel company that suit would be brought against any one who might use the apparatus made by them.

The fourth plea alleged substantially the same representations as the third, and that while plaintiffs were about to commence the construction of the apparatus, the National Gas Light & Fuel Company notified defendant that the plaintiffs' apparatus was an infringement upon the patents; that defendant thereupon notified plaintiffs that it would not accept such apparatus, and thereupon plaintiffs proposed that, if defendant would permit them to proceed, they would, before asking payment for the same, furnish defendant a good and sufficient bond indemnifying it against all damages that it might suffer by reason of any infringement, and, upon defendant accepting such offer, plaintiffs refused to give such bonds as they had agreed, and still neglect to do so.

To these special pleas, a general demurrer was filed by the plaintiffs, which was overruled by the court, and, by leave of the court, replications were filed, and, upon the issues thus clubjuris

Page 168 U. S. 257

joined, a trial was had which resulted in a verdict for the defendant. A motion for a new trial being overruled and judgment entered upon the verdict, the case was taken to the appellate court of Illinois, and from that court to the supreme court, which affirmed the judgment of the circuit court, whereupon plaintiffs sued out a writ of error from this Court.