Messrs. Charles Rosen and Henry B. Gayley for appellants.
Messrs. Randolph Barton, Jr., and James E. Zunts for appellee.
Mr. Justice Holmes delivered the opinion of the court:
This is a bill in equity, brought by the appellants, alleging that Healy is the owner of patents for improvements in boxes and machines for making boxes, and that the Healy Box Corporation is the grantee of the exclusive right to make and use the machines, and to make, use, and sell the boxes containing the patented improvements. The bill next alleges that the defendant is infringing the patents, and will continue to do so unless restrained. Then, anticipating a defense, it sets forth a license to the defendant, a breach of its conditions, and a termination of [237 U.S. 479, 480] the same. It adds that the license contained a stipulation that in case of any suit for infringement the measure of recovery should be the same as the royalty agreed upon for the use of the inventions, and another for the return of the machines let to the defendant while the license was in force. The bill prays for an injunction against making, using, or selling the boxes or machines, for an account of profits received by reason of the infringement, for triple the damages measured as above stated, and for the surrender of the machines. The jurisdiction depended upon this being a case arising under the patent laws, and the district court, thinking that it was merely a matter of contract, dismissed the bill. In our opinion its decision was wrong.
It may be that the reasoning of The Fair v. Kohler Die & Specialty Co. 228 U.S. 22 , 57 L. ed. 716, 33 Sup. Ct. Rep. 410, is more consistent with that of Mr. Justice Bradley's dissent in Hartell v. Tilghman, 99 U.S. 547 , 25 L. ed. 357 (a decision since explained and limited, White v. Rankin, 144 U.S. 628 , 36 L. ed. 569, 12 Sup. Ct. Rep. 768), than with that of the majority, but it is the deliberate judgment of the court and governs this case. As stated there, the plaintiff is absolute master of what jurisdiction he will appeal to; and if he goes to the district court for infringement of a patent, unless the claim is frivolous or a pretense, the district court will have jurisdiction on that ground, even though the course of the subsequent pleadings reveals other more serious disputes. Excelsior Wooden Pipe Co. v. Pacific Bridge Co. 185 U.S. 282 , 46 L. ed. 910, 22 Sup. Ct. Rep. 681. Jurisdiction generally depends upon the case made and relief demanded by the plaintiff; and as it cannot be helped, so it cannot be defeated by the replication to an actual or anticipated defense contained in what used to be the charging part of the bill. For the same reason it does not matter whether the validity of the patent is admitted or denied.
As appears from the statement of it, the plaintiff's case arose under the patent law. It was not affected by [237 U.S. 479, 481] the fact that the plaintiffs relied upon a contract as fixing the mode of estimating damages, or that they sought a return of patented machines to which, if there was no license, they were entitled. These were incidents. The essential features were the allegation of an infringement and prayers for an injunction, an account of profits, and triple damages,-the characteristic forms of relief granted by the patent law. The damages were grounded on the infringement, and the contract was relied upon only as furnishing the mode in which they should be ascertained.
[ Footnote 1 ] Bankruptcy of Healy Box Corporation suggested, and Theodore Friend Humphrey, trustee, substituted May 3, 1915, as party appellant herein.