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Opinion of the Court.

be construed to cover a cylinder with a smooth surface, not formed into chambers. Fay v. Cordesman, 109 U. S. 408, 420, 421; Sargent v. Hall Safe & Lock Co., 114 U. S. 63, 86; Shepard v. Carrigan, 116 U. S. 593, 597, 598; White v. Dunbar, 119 U. S. 47, 51, 52· Crawford v. Keysinger, 123 U. S. 589, 606, 607

The decree of the Circuit Court is affirmed.

ST. PAUL PLOUGH WORKS v. STARLING.

ERROR TO THE CIRCUIT COURT OF THE UNITED STATES FOR THE

DISTRICT OF MINNESOTA,

No. 1367. Submitted May 4, 1888. – Decided May 14, 1888.

An action in the Circuit Court by a patentee for breach of an agreement of

a licensee to make and sell the patented article and to pay royalties, in which the validity and the infringement of the patent are controverted, is a case touching patent rights,” of which this court has appellate jurisdiction, under $ 699 of the Revised Statutes, without regard to the sum or value in dispute.

Motion to dismiss for want of jurisdiction. The case is stated in the opinion.

Mr. Charles S. Careins and Mr. D. S. Frackelton for the motion.

Mr. John B. Sanborn and Mr. W. H. Sanborn, opposing.

MR. JUSTICE Gray delivered the opinion of the court.

The original action was brought in the Circuit Court of the United States for the District of Minnesota by a citizen of Nebraska against a corporation of Minnesota, for breach of an agreement in writing, dated December 17, 1877, by which the plaintiff granted to the defendant the right to make and sell within a defined territory a certain kind of plough, under letters patent granted August 18, 1874, to the plaintiff for an

Opinion of the Court.

improvement in ploughs, (of which he alleged in his complaint that he was the first and original inventor,) and the defendant agreed to make such ploughs in a good and workmanlike manner, and to advertise and sell them at a price not exceeding the price of similar implements sold by other manufacturers, and to render accounts semiannually and pay the plaintiff a royalty of $2.50 for each plough sold.

The defendant, in its answer, admitted the agreement sued on,

but denied any breach; denied that the plaintiff was the original and first inventor of any improvement in ploughs, and averred that his alleged improvement had been described in six earlier patents specified; admitted that the defendant had made and sold ploughs according to the method described in letters patent granted March 9, 1880, to one Berthiaume, and averred that those ploughs were constructed upon an entirely different principle from the plaintiff's. The plaintiff filed a general replication, denying the allegations of the

answer.

A jury trial having been duly waived in writing, the case was tried by the court, which, upon facts set forth in detail, found that the defendant had made 960 ploughs under the Berthiaume patent, and 350 other ploughs; that all those ploughs infringed the plaintiff's patent, and that the plaintiff's invention was not anticipated by either of the six other patents set up in the answer; and concluded that the plaintiff was entitled to a royalty of $2.50 on each plough sold by the defendant, amounting to $3275; overruled a motion for a new trial, and gave judgment for the plaintiff accordingly. 29 Fed. Rep. 790; 32 Fed. Rep. 290.

The defendant sued out this writ of error, which the original plaintiff now moves to dismiss for want of jurisdiction, because the judgment below was for less than $5000.

The decision of this motion depends upon $ 699 of the Revised Statutes, by which a writ of error or appeal may be allowed from any final judgment or decree of the Circuit Court, without regard to the sum or value in dispute, “in any case touching patent rights.” This section substantially reënacts the corresponding provision of the patent act of 1870, in

Opinion of the Court.

which the words were “in any action, suit, controversy or case, at law or in equity, touching patent rights.” Act of July 8, 1870, c. 230, $ 56, 16 Stat. 207. The language applied to this subject in the patent act of 1836, under which the cases of Wilson v. Sandford, 10 How. 99, and Brown v. Shannon, 20 How. 55, were decided, was that used in that act in defining the jurisdiction of the Circuit Court in patent cases, namely, “ actions, suits, controversies and cases, arising under any law of the United States, granting or confirming to inventors the exclusive rights to their inventions or discoveries.” Act of July 4, 1836, c. 357, § 17, 5 Stat. 124. Similar words were used in the patent act of 1861 in defining the jurisdiction of this court. Act of February 18, 1861, c. 37, 12 Stat. 130. But in the act of 1870, as in the Revised Statutes, Congress, while using similar language in defining the jurisdiction of the Circuit Court, substituted, (it must be supposed, purposely,) the new phrase, "touching patent rights,” in defining the jurisdiction of this court.

The present case was an action upon a contract by which the plaintiff licensed the defendant to make and sell a patented article, and not a suit for infringing the plaintiff's patent. But the questions whether that patent was valid, and whether it had been infringed, were put in issue by the pleadings and decided by the Circuit Court. Whether, within the meaning of other statutes, and in the light of previous decisions, this case should be considered as “arising under” the patent laws of the United States, is a question not before us. See Dale Tile Manufacturing Co. v. Hyatt, 125 U. S. 46, and cases there cited. It is sufficient for the decision of this motion, that we have no doubt that a case in which the validity and the infringement of a patent are controverted is a "case touching patent rights," and therefore within the appellate jurisdiction of this court, under $ 699 of the Revised Statutes, without regard to the sum or value in dispute.

Motion to dismiss for want of jurisdiction denied.

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A contract in writing, by which a mining company agrees to sell and de

liver lead ore from time to time at the smelting works of a partnership, to become its property upon delivery, and to be paid for after a subsequent assay of the ore and ascertainment of the price, cannot be assigned by the partnership, without the assent of the mining company, so far as regards future deliveries of ore. Nor is the mining company, by continuing to deliver ore to one of the partners after the partnership has been dissolved and has sold and assigned to him the contract, with its business and smelting works, estopped to deny the validity of a subsequent assignment by him to a stranger.

This was an action brought by a smelting company, incorporated by the laws of Missouri, against a mining company, incorporated by the laws of Maine, and both doing business in Colorado by virtue of a compliance with its laws, to recover damages for the breach of a contract to deliver ore, made by the defendant with Billing and Eilers, and assigned to the plaintiff. The material allegations of the complaint were as follows:

On July 12, 1881, a contract in writing was made between the defendant of the first part and Billing and Eilers of the second part, by which it was agreed that the defendant should sell and deliver to Billing and Eilers at their smelting works in Leadville ten thousand tons of carbonate lead ore from its mines at Red Cliff, at the rate of at least fifty tons a day, beginning upon the completion of a railroad from Leadville to Red Cliff, and continuing until the whole should have been delivered, and that “all ore so delivered shall at once upon the delivery thereof become the property of the second party;” and it was further agreed as follows:

The value of said ore and the price to be paid therefor

Statement of the Case.

shall be fixed in lots of about one hundred tons each; that is to say, as soon as such a lot of ore shall have been delivered to said second party, it shall be sampled at the works of said second party, and the sample assayed by either or both of the parties hereto, and the value of such lots of ore shall be fixed by such assay; in case the parties hereto cannot agree as to such assay, they shall agree upon some third disinterested and competent party, whose assay shall be final. The price to be paid by said second party for such lot of ore shall be fixed on the basis hereinafter agreed upon by the closing New York quotations for silver and common lead, on the day of the delivery of sample bottle, and so on until all of said ore shall have been delivered.

“Said second party shall pay said first party at said Leadville for each such lot of ore at once, upon the determination of its assay value, at the following prices,” specifying, by reference to the New York quotations, the price to be paid per pound for the lead contained in the ore, and the price to be paid for the silver contained in each ton of ore, varying according to the proportions of silica and of iron in the ore.

The complaint further alleged that the railroad was completed on November 30, 1881, and thereupon the defendant, under and in compliance with the contract, began to deliver ore to Billing and Eilers at their smelting works, and delivered 167 tons between that date and January 1, 1882, when “the said firm of Billing and Eilers was dissolved, and the said contract and the business of said firm, and the smelting works at which said ores were to be delivered, were sold, assigned, and transferred to G. Billing, whereof the defendant had due notice;” that after such transfer and assignment the defendant continued to deliver ore under the contract, and between January 1 and April 21, 1882, delivered to Billing at said smelting works 894 tons; that on May 1, 1882, the contract, together with the smelting works, was sold and conveyed by Billing to the plaintiff, whereof the defendant had due notice; that the defendant then ceased to deliver ore under the contract, and afterwards refused to perform the contract, and gave notice to the plaintiff that it considered the contract can

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