Messrs. Melville Church, of Washington, D. C., D. Anthony Usina, of New York City, and Herbert H. Thompson, of Brooklyn, N. Y., for appellant.
Messrs. Dean S. Edmonds, of New York City, and Charles Neave, of Boston, Mass., W. Brown Morton, and R. Morton Adams, all of New York City, for appellee.
Messrs. William D. Mitchell, Sol. Gen., of Washington, D. C., Harry E. Knight, Sp. Asst. Atty. Gen., and Henry C. Workman, of Washington, D. C., amici curiae. [271 U.S. 232, 233]
Mr. Justice Mc,REYNOLDS delivered the opinion of the Court.
Appellant brought suit against the Engineering Company, in the United States District Court for the Eastern District of New York, for damages, profits, etc., on account of the manufacture by it of gyroscopic compasses, covered by patents, for the United States; also for an injunction against further infringements. The allegation which demands special consideration follows:
The contract with the United States is not set forth. Whether it undertook to protect them against claims arising under appellant's patents, or whether the compasses were delivered before or after July 1, 1918, or whether the arrangement necessarily involved an infringement of the patents, does not appear. [271 U.S. 232, 234] The trial court dismissed the bill for lack of jurisdiction, and granted this direct appeal December 30, 1924. Such appeals were permitted by section 238, Judicial Code (Comp. St. 1215), 'in any case in which the jurisdiction of the court is in issue, in which case the question of jurisdiction alone shall be certified to the Supreme Court from the court below for decision.' We are now concerned only with the power of the trial court to decide the controversy revealed by the record.
Under section 24, Judicial Code (Comp. St. 991), District Courts have original jurisdiction:
Appellant charged that the Engineering Company had infringed its patents by making and selling compasses to the United States, under contract, during the years 1918 to 1923, and intended further to infringe by continuing so to do. It asked for damages and an injunction. But for the allegation that the inventions were made and sold under such a contract, this would be but the ordinary patent suit. And so the real question presented is whether that allegation was enough to deprive the District Court of the jurisdiction plainly conferred by section 24.
Act of June 25, 1910, c. 423, 36 Stat. 851 (Comp. St. 9465), 'to provide additional protection for owners of patents,' directed:
The Act of July 1, 1918, c. 114, 40 Stat. 704, 705 (Comp. St. Ann. Supp. 1919, 9465), amended the act of 1910 to read:
The argument is that the act of 1918 deprived the District Court of jurisdiction over the controversy between the present parties, because it limited the patent owner's remedy, under circumstances like those here disclosed, to a suit against the United States in the Court of Claims. But we think this contention goes to the merits of the matter, and not merely to the question of jurisdiction. The true intent and meaning of the statute is not free from doubt; but certainly there is nothing therein which shows any clear purpose to take away the power to decide. It became the duty of the court below to consider and determine whether, in the circumstances stated, appellee was relieved of liability and permitted by the statute to do what otherwise would have constituted a [271 U.S. 232, 236] violation of appellant's rights. There was jurisdiction. The judgment below must be reversed, and the cause remanded for further proceedings in conformity with this opinion. See The Pesaro, 255 U.S. 216 , 41 S. Ct. 308; Smith v. Apple, 264 U.S. 274 , 44 S. Ct. 311; Smyth v. Asphalt Belt Ry., 267 U.S. 326 , 45 S. Ct. 242.