December 1, 1871
PHILIP ET AL.
MOTION to dismiss an appeal from the Supreme Court of the District of Columbia. The Judiciary Act of 1789, as is known, gives jurisdiction to this court in ordinary cases only 'where the matter in dispute exceeds the sum or value of $2000.' The Patent Act of February 18th, 1861,*fn1 provides that 'From all judgments and decrees of any Circuit Court, rendered in any action, suit, controversy, or case at law or in equity, arising under any law of the United States granting or confirming to authors the exclusive right to their respective writings, or to inventors the exclusive right to their inventions or discoveries, a writ of error or appeal, as the case may require, shall lie, at the instance of either party, to the Supreme Court of the United States, in the same manner and under the same circumstances as is now provided by law in other judgments and decrees of such Circuit Courts, without regard to the sum or value in controversy in the action.' In this state of the statutory law, one Nock, inventor of locks, sued Philip & Solomon as infringers. He laid his damages at $5000 and got judgment for $500. To this Philip & Solomon took a writ of error. After this, that is to say, July 20th, 1870, Congress passed another act,*fn2 thus: 'A writ of error or appeal to the Supreme Court of the United States shall lie from all judgments and decrees of any Circuit Court, or of any District Court exercising the jurisdiction of a Circuit Court, or of the Supreme Court of the District of Columbia or of any Territory, in any action, suit, controversy, or case, at law or in equity, touching patent rights, in the same manner and under the same circumstances as in other judgments and decrees of such Circuit Courts, without regard to the sum or value in controversy.'
The opinion of the court was delivered by: The Chief Justice delivered the opinion of the court.
Mr. G. W. Paschall, in support of his motion to dismiss:
The language of the act of 1870 is broader than that of the act of 1861; but as the former act was not passed until after this writ was taken, of course the writ, if sustainable at all, must rest on the act of 1861.
Now a suit against a naked infringer of a patent, is not within the letter, and certainly not within the spirit of that act. That act may well apply to the interference cases arising between rival patentees, or to controversies between such patentees, or those claiming under them–cases which properly involve the construction of the patent laws; where no amount can be said to be involved, but only the rights of inventors, to the benefit of their discoveries, as against the government or other inventors–without allowing a naked trespasser the benefit of appeal simply because he disputes the validity of a patent. The assumption really is that the validity of every patent may be attacked by any trespasser in a collateral way. Is this admissible?
Mr. R. D. Mussey, contra.
The patent law of February, 1861, gives to parties to suits arising under any law of the United States giving to inventors the exclusive right to their inventions or discoveries, a writ of error or appeal to the Supreme Court of the United States without regard to the sum in controversy. The act of 1870 does not alter the right of appeal or to a writ of error in this respect.
The motion to dismiss must, therefore, be