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Dudley v. Mayhew.

J. L. Talcott, for respondent. I. The bill in this case was filed for the sole purpose of establishing the validity of a patent, and to restrain the infringement of the same. The jurisdiction to do this is, by the constitution, vested exclusively in the federal courts, and the court of chancery of the state of New-York had no jurisdiction to entertain the suit.

The power to restrain the defendant from making and vending the stove in question does not exist in the court of chancery, independently of the constitution and laws of the United States; and no power of jurisdiction can be conferred upon the state courts by congress under the constitution. (Constitution U. S. Art. 3, § 1, 2; Martin v. Hunter's Lessee, 1 Wheat. 334, 5, 7; 3 Story on the Constitution, éj 1748, 1749; Mannhardt v. Soderstrom, 1 Binney, 138; U. S. v. Lathrop, 17 John. 4; 1 Kent's Com. 1st ed. 372; 3 McLean, 186; Curtis on Patents, p. 452, i 406; Phillips on Patents, 378.)

II. And if congress has the power to confer upon the state courts jurisdiction to enforce the patent laws, yet it has not done so; but on the contrary, has vested the jurisdiction exclusively in the federal courts, by necessary implication. (Patent Law of 1836, $ 17; 5 Peters' Laws U. S. 124; Almy v. Harris, 5 John. 175; 5 Cowen, 165; Aldrich v. Hawkins, 6 Blackf. 125; Lang v. Scott, 1 id. 405; Parsons v. Barnard, 7 John. 144, and see Patent Law of 1837, $ 2; 5 Peters' Laws U.S. 191; 4 Burr, 2319, 2323; 5 Mass. 514; 2 Watts f. Serg. 163; 2 Penn. 462; 1 Paine, 45; 9 John. 507.)

III. If the court of chancery had not originally any jurisdiction of the subject matter, the alledged stipulation could not confer it. It is not a personal privilege which may be waived by the parties. (Coffin v. Tracy, 3 Caine's Rep. 129; Davis v. Packard, 6 Peters, 276; Overstreet v. Brown, 4 McCord, 79; Lindsley v. McLelland, 1 Bibb 262 ; 3 Blackf. 48.

It was

STRONG, J. delivered the opinion of the court. insisted on the argument before us, as it had been in the court below, by the counsel for the plaintiff, that the defendant was precluded from raising the question of jurisdiction by his

Dudley v. Mayhew.

written stipulation that he would not do so, given for a valuable consideration, and filed with the examiner as a document in the cause. It may have been a breach of faith and of good morals in the defendant to insist upon the objection after his solemn agreement to waive it; but that is no reason why any court should adopt the strong measure of grant ing a perpetual injunction in a case where it has no jurisdiction It has been long and correctly settled that not even a direct assent by the parties can confer jurisdiction, or render the judg. ment of a tribunal in a matter over which it has not by law any cognizance, effectual. (Coffin v. Tracy, 3 Caines' Rep. 129. Davis v. Packard, 7 Peters, 276.)

It was contended, although I think not strenuously, by the plaintiff's counsel, that inventors have at common law and independently of the act of congress, the exclusive right to make and vend implements according to their models, and that consequently the statutory remedies are merely cumulative, and that the pre-existing right to resort to our state courts for redress in such cases is not impaired. It was formerly supposed in England, that the author of a literary composition had, independently of any act of parliament, the exclusive right to print and publish it for sale, and could maintain an action against any one who should invade such right. And it was so decided by a majority of the judges of the court of king's bench, in opposition to the opinion of Justice Yates, in the case of Miller v. Taylor, (4 Burr. 2305.) But that case was overruled, and the able opinion of Judge Yates finally prevailed in the House of Lords, in the case of Donaldson v. Becket et al. decided in 1774. (7 Bro. P. C. 88.) The case of Buckford v. Hood, (7 Durn.fo East, 620,) is not at all in conflict with Donaldson v. Becket. Lord Kenyon's opinion proceeded expressly on the ground that the act of parliament, while conferring a right, provided no remedy to the proprietor for its invasion, and he said that for that reason the common law remedy attached; and Judge Gross said that although the author's right was extended for a second term, yet that the statutory penalties applied only to the first; and if there was no redress at common law there would be a

Dudley v. Mayhew.

right during the period prescribed in the second term without any means of enforcing it.

But although there was at first some difference of opinion among the English judges as to the alledged common law right of literary authors, none of them ever supposed that the inventor of a mechanical improvement had at common law the exclusive right to make and vend instruments according to his model, after he had published it to the world. All the judges admitted, in Miller v. Taylor, that the inventor had no such right independently of his patent. Willes, J. said, “ As by the communication of an invention in trade, manufactures or machines, men are taught the art or science, they have a right to use it.” Astor, J. remarked that “the property of the maker of a mechanical engine is confined to that individual thing which he has made ; and the machine made in imitation or resemblance of it is a different work in substance, materials, labor and expense, in which the maker [inventor) of the machine can not claim any property.” “ The imitated machine, therefore, is a new and different work." And Yates, J. said, “We all know whenever a.machine is published (be it ever so useful and ingenious) the inventor has no right to it, but only by patent.” That eminent judge, however, could not discover any material difference in this respect between literary works and mechanical inventions. He thought that neither of them had the requisite common law indicia of property. His opinion finally prevailed in the House of Lords, where it was fully sustained by Barons Eyre, Perrot and Adams, Chief Justice De Grey, and Lords Camden and Apsby; and it is now the settled law in England, and is, I think, generally admitted in this country. It furnishes a strong argument against the common law claim of inventors, that it has never been successfully asserted in any of the tribunals in this state or in the mother country.

The right in question was therefore created under congressional legislation, and the important question presented in this part of the case is whether the proprietors are not confined in case of its actual or threatened invasion, to the remedies prescribed and the tribunals designated in the act. There can be

Dudley v. Mayhew.

no doubt as to the power of congress to mould the right, prescribe the remedy, and designate the court in which alone it can be enforced, under the general power to promote the progress of science and useful art, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries, conferred upon that body by the constitution of the United States. (Article 1, 6, subd. 8.) The question is whether, so far as it relates (o tire exclusive limitation of the courts, it has in this instal.co exercised that power, either in express terms or inferentially.

The 17th section of the existing act to promote the progress of useful arts, passed July 4, 1836, (Acts of th.u year, p. 214, provides that all actions, suits, controvenzie's and cases arising under any law of the United States granting or confrining 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 any district Coun having the power and jurisdiction of a circuit court; and then it confers expressly upon those tribunals the power to issue in junctions to prevent the violation of any right of an inventor, as secured to him by any law of the United States, upon such terms and conditions as such courts may deem reasonable. Had there been pre-existing remedies in favor of inventors independently of those resulting from congressional legislation, this act would not have taken them away. Nothing short of an express exclusion or of utter incompatibility between the preexisting and new remedies would have done that. But congress was then legislating upon a right conferred primarily and exclusively by its own action, and was maturing a system for its origin, progress and support, and the language used must be construed in reference to those objects. That is the only logical and reasonable way of applying terms of doubtful import. When therefore the act declares that the United States circuit courts (or district courts possessing similar powers) shall have original jurisdiction of all actions, suits, controversies and cases arising under the patent laws, the language is strong to show that it was intended to confine judicial action in such cases to those

Dudley v. Mayhew.

tribunals. It is undoubtedly true that those are, to some extent, inferior courts, and would have had no jurisdiction at all in such cases unless it had been directly conferred upon them by the act, and that therefore the grant of power to them does not necessarily exclude the action of others having a co-ordinate or concurrent authority. But then if congress had intended that the state courts might take cognizance of those controversies, the terms used would have been less comprehensive-less peremptory—and although that body could not have directly conferred the power upon the state tribunals, they would have refrained from using terms which might well be interpreted as exclusive.

But I am unwilling to rest the decision of this point upon the literal construction of the act, as there are other controlling considerations about which there can be no doubt. It is very

clear that when a party is confined to a statutory remedy, he must take it as it is conferred; and that where the enforcing tribunal is specified, the designation forms a part of the remedy, and all others are excluded. The rule is inapplicable of course where property or a right is conferred, and no remedy for its invasion is specified. Then the party may sustain his right or protect his property in the usual manner. That is in such cases reasonably supposed to be the intention of the legislature, as it could not be the design to confer a barren property or a fruitless right, which could not be protected or enforced any where. The same rule might prevail where the protection given by the legislature is by way of penalty to a common informer only, and no redress is given to the proprietor. The remark made by Lord Holt in Ewen v. Jones, (2 Salk. 415,) that wherever a statute gives a right the party shall by consequence have an action at law to recover it, is undoubtedly correct when applied to cases where the statute does not give any remedy to the proprietor for an invasion of his property or right.

The principle that where a statute confers a right, and prescribes adequate means for protecting it, the proprietor is confined to the statutory remedy, is conformable to the manifest intention of the legislature in such cases, and has therefore been properly settled in the courts of England, and in this country.

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