the monopoly conferred by the patent law and that the attempt to enforce its apparent obligations under the guise of a patent infringement was not embraced within the remedies given for the protection of the rights which the patent law conferred. Thus concluding, it becomes we think unnecessary to do more than say that we are of opinion that the attempt in argument to distinguish the cases by the assumption that they rested upon a mere question of the form of notice on the patented article or the right to contract solely by reference to such notice is devoid of merit since the argument disregards the fundamental ground upon which, as we have seen, the decided cases must rest. Moreover, so far as the argument proceeds upon the assumption of the grave disaster which must come to the holders of patent rights and articles made under them from the future application of the doctrine which the cases establish, it must be apparent that if the forebodings are real the remedy for them is to be found not in an attempt judicially to correct doctrines which by reiterated decisions have become conclusively fixed, but in invoking the curative power of legislation. In addition, through perhaps an abundance of precaution we direct attention to the fact that nothing in the decided cases to which we have referred, having regard either to the application of the general law or of the patent law, deprives an inventor of any right coming within the patent monopoly, since the cases alone concerned whether the monopoly of the patent law can be extended beyond the scope of that law or in other words, applied to articles after they have gone beyond its reach. The proposition so earnestly insisted upon that while this may be true, it does not fairly consider the reflex detriment to come to the rights of property of the inventor within the patent law as a result of not recognizing the right to continue to apply the patent law as to objects which have passed beyond its scope, is obviously not one susceptible of judicial cognizance. This must be since whether for the preservation of the rights which are within a law, its provisions should be extended to embrace things which it does not include typically illustrates that which is exclusive of judicial power and within the scope of legislative action. It remains, then, only to apply the principles established by the authorities which we have stated to the answers to the questions. The first question is: "Does jurisdiction attach under the patent laws of the United States?" As we assume under the admissions of counsel that the bill asserted the existence of rights under the patent law, and as at the time it was filed the want of merit in such assertion had not been so conclusively settled as to cause it to be frivolous, we are of opinion that the court had jurisdiction to pass upon the case as made by the bill; that is, to determine whether or not the suit arose under the patent law and hence as thus understood the question should be answered, yes. Considering the second and third questions as virtually involving one consideration we state them together: 2. If so, do the recited facts disclose that some right or privilege granted by the patent laws has been violated? 3. Can a patentee, in connection with the act of delivering his patented article to another for a gross consideration then received, lawfully reserve by contract a part of his monopoly right to sell? Correcting their ambiguity of expression by treating the questions, as they must be treated, as resting upon and deducible from the facts stated in the certificate and therefore as embracing inquiries concerning the contract of sale containing the price-maintenance stipulation, it follows from what we have said that the questions must be answered in the negative. The final question is this: 4. If jurisdiction attaches solely by reason of diversity of citizenship, do the recited facts constitute a cause of action? Upon the hypothesis which this question assumes there also can be no doubt that it must be answered in the negative. The first question will be certified as answered yes, and the second, third, and fourth as answered no. And it is so ordered. Mr. Justice HOLMES and Mr. Justice VAN DEVANTER are of opinion that each of the questions should be answered in the affirmative. Mr. Justice BRANDEIS concurring: Whether a producer of goods should be permitted to fix by contract, express or implied, the price at which the purchaser may resell them, and if so, under what conditions, is an economic question. To decide it wisely it is necessary to consider the relevant facts, industrial and commercial, rather than established legal principles. On that question I have expressed elsewhere views which differ apparently from those entertained by a majority of my brethren. I concur, however, in the answers given herein to all the questions certified; because I consider that the series of cases referred to in the opinion settles the law for this Court. If the rule so declared is believed to be harmful in its operation, the remedy may be found, as it has been sought, through application to the Congress or relief may possibly be given by the Federal Trade Commission, which has also been applied to. [Supreme Court of the United States.] MARCONI WIRELESS TELEGRAPH COMPANY OF AMERICA v. SIMON. Decided March 4, 1918. 249 O. G., 1224; 246 U. S., 46. 1. PATENTS-CONTRACT FOR FURNISHING PATENTED APPARATUS FOR THE UNITED STATES-LIABILITY FOR INFRINGEMENT ACT OF JUNE 25, 1910. Where the making of parts of apparatus by a contractor is in and of itself infringement, Heid that the contractor is not protected by the supposition of a license resulting from the act of June 25, 1910. 2. SAME-SAME-SAME-QUESTION IS FOR THE LOWER COURT. Where the question raised is whether or not the apparatus as furnished the Government by a contractor was a direct infringement or a mere contribution, Held that this is a question which it was the province of the court below to determine; but a mere contribution to infringement by the Government is not an illegal interference with the patentee's rights. On WRIT OF CERTIORARI to the United States Circuit Court of Appeals of the Second Circuit. Mr. John W. Griggs, Mr. Richard A. Ford, Mr. James R. Sheffield, and Mr. L. F. H. Betts for the petitioner. Mr. Walter H. Pumphrey, Mr. Zell G. Rowe, and Mr. Harry Lee Dodson for the respondent. Mr. Chief Justice WHITE delivered the opinion of the Court. In the spring or early summer of 1915 the Navy Department submitted its call for proposals to furnish twenty-five wireless-telegraph transmitting sets. The call contained a specification describing the apparatus desired and provided that no bid would be entertained unless the bidder in advance or at the time of his bid submitted a sample of the apparatus which he would furnish under his bid if accepted. Simon, the respondent who had no manufacturing establishment, employed a manufacturer of electrical apparatus to make for him a wireless-telegraph transmitting set and when it was made submitted it to the Navy Department in accordance with the call. He also submitted a bid to furnish the appliances called for conformably to the sample and his bid was accepted by the Navy Department in August, 1915. Before the contract, however, was formally completed, in September following the Marconi Wireless Telegraph Company, the petitioner, as assignee of the Marconi patents on apparatus for wireless telegraphy, filed its bill against Simon seeking an injunction preventing him from making or delivering the apparatus described in his bid on the ground that his doing so would be an infringement of the rights secured by the Marconi pat ents. The complainant moved for a preliminary injunction in accordance with the prayer of the bill, supporting its motion by affidavits, and the defendant made a counter-motion to dismiss the bill, the motion not being in the record but the ground thereof being persuasively shown by an affidavit submitted in its support, as well as by the reasons given by the court when it came to pass upon the motion. The ground stated in the affidavit was as follows: That affiant, in supplying the United States Navy with wireless sets constructed in accordance with Navy specifications in the present instance for use on submarines understood that he would be free of any and all liability for profits and damages for alleged infringement of patents, in view of the law as established by many recent decisions of the United States courts holding that the Government, in the exercise of the right of eminent domain, may impose a license on any patent, the subject matter of which it elects to use, and if the apparatus supplied by affiant to the Navy comes within the claims of the patent in suit, affiant has only assisted the Government, a licensee, in carrying out its license. On the hearing of the motions there was contention as to whether the transmitting sets furnished by Simon were merely an indirect or contributory infringement of the Marconi patents because they were not complete and could not become so until they were adjusted for use and used by the Navy Department, or whether they were so complete without reference to such subsequent adjustment and use as to be a direct infringement. In passing at the same time upon the motion for injunction and the motion to dismiss the bill, the court, not doubting that the bill and the affidavits supporting the motion. for an injunction established that the making and furnishing of the apparatus by Simon in an abstract sense infringed the Marconi patents either directly or indirectly by contribution, did not find it necessary to determine which one of the two characters of infringement had resulted because it concluded that such determination in the concrete was wholly irrelevant as under the view taken of the case in any aspect there was no unlawful infringement. This conclusion was reached by considering the act of 1910 in connection with the decision in Crozier v. Krupp (C. D., 1912, 633; 178 O. G., 1154; 224 U. S., 290) and by holding that from such considerations it resulted that there existed in favor of the United States a general license to use patent-rights when necessary for its governmental purposes and that Simon, as a contractor or one proposing to contract with the United States, could avail himself of the license right in favor of the United States and therefore was entitled to make and deliver the articles in question for the United States, although if such license had not existed the doing so would be either a direct or contributory infringement. The order as to both the injunction and the motion to dismiss were as follows: No injunction will issue. The motion to dismiss is granted, unless plaintiff elects in twenty days to plead over, and allege infringements not arising from governmental contracts. If such election is made, defendant to answer in twenty days after amended bill filed. (227 Fed. Rep., 906.) The complainant having refused to make the election and to amend, a decree of dismissal was subsequently entered, which was reviewed by the court below. That court, while it affirmed upon the theory of the license resulting from the act of 1910 in accordance with the views which had been expressed by the trial court, also treated the act of Simon as either an infringement per se or a contribution to the infringement, if any, resulting from the acts of the United States, and did not distinguish between them doubtless because of a belief that under the construction given to the act of 1910 both were negligible and afforded no ground for complaint. (231 Fed. Rep., 1021.) By virtue of the allowance of a writ of certiorari the case is now before us. In view of the construction which we have given the act of 1910 in the case of William Cramp & Sons Company v. International Curtis Marine Turbine Co. (ante, 336; 249 O. G., 739; 246 U. S., 28), it is apparent that both the courts below erred, since the significance which they gave to the statute and upon which their conclusions were based, we had held in the case stated to be without foundation. It would hence follow, looking at this case from a generic point of view, that our duty would be to reverse the action of both courts below and to decide the controversy on the merits in the light of the construction of the statute which we have announced. But we are of opinion that under the case as made by the record the duty of applying to the issues the true meaning of the statute cannot with safety or with due regard to the rights of the parties be now performed because of the failure of the courts below (a failure obviously resulting from the mistaken view they took of the statute) to determine whether the acts of Simon in furnishing the wireless apparatus amounted to an intrinsic or per se infringement, or only constituted contributions to the infringement, if any, resulting from the adjustment and use of the apparatus by the United States for its essential governmental purposes. We are compelled to this conclusion because if the making of the parts was in and of itself an infringement, it is clear under the ruling which we have just made in the Cramp case that Simon was not protected by the supposition of a license resulting from the act of 1910 and that his acts were none the less wrongful because committed in the performance of a contract with the United States. And if on the other hand they were only contributions to an infringement resulting from the acts of the United States, it is equally clear that in view of the provisions of the act of 1910 as interpreted in the Cramp case |