ought to be construed to operate retrospectively, unless such a construction is unavoidable.1

1 Blanchard v. Sprague, ut supra. Letters-patent were granted to the plaintiff, Thomas Blanchard, on the 6th of September, 1819; and, being deemed inoperative, by reason of defects in the specification, new letterspatent were granted, on the 20th of January, 1820, for the space of fourteen years. Afterward, by Act of Congress, passed the 30th of June, 1834, the sole right was granted to the plaintiff, to make, use, and vend his invention, for the term of fourteen years from the 12th of January, 1834. This act not being thought to describe, with sufficient accuracy, the letters-patent to which it was intended to refer, an additional act was passed, on the 6th of February, 1839, renewing the Act of the 30th of June, 1834, and correcting the date of the 12th of January, 1834, to the 20th of January, 1834. This last act was as follows: "An Act to amend and carry into effect the intention of an Act, entitled an Act to renew the Patent of Thomas Blanchard, approved June 30th, 1834. Sec. 1. Be it enacted, &c., That the rights secured to Thomas Blanchard, a citizen of the United States, by letterspatent granted on the sixth of September, eighteen hundred and nineteen, and afterwards, on a corrected specification, on the twentieth day of January, Anno Domini eighteen hundred and twenty, be granted to the said Blanchard, his heirs and assigns, for the further term of fourteen years from the twentieth of January, eighteen hundred and thirty-four, said invention, so secured, being described, in said last-mentioned letters, as an engine for turning or cutting irregular forms out of wood, iron, brass, or other material which can be cut by ordinary tools. Provided, that all rights or privileges, heretofore sold or granted by said patentee, to make, construct, use, or vend the said invention, and not forfeited by the purchasers or grantees, shall enure to and be enjoyed by such purchasers or grantees, respectively, as fully, and upon the same conditions, during the period hereby granted, as for the term that did exist when such sale or grant was made. Sec. 2. And be it further enacted, that any person who had, bonâ fide, erected or constructed any manufacture or machine, for the purpose of putting said invention into use, in any of its modifications, or was so erecting or constructing any manufacture or machine, for the purpose aforesaid, between the period of the expiration of the patent heretofore granted, on the thirtieth day of June, one thousand eight hundred and thirty-four, shall have and enjoy the right of using said invention, in any such manufacture or machine, erected or erecting as aforesaid, in all respects, as though this act had not passed. Provided, that no person shall be entitled to the right and privilege by this section granted, who has infringed the patent-right and privilege heretofore granted, by actually using or vending said machine, before the expiration of said patent, without grant or license, from said patentee or his assignees, to use or vend the same."

§ 405. The Act of Congress of July 4, 1836, § 17, declares, "that all actions, suits, controversies, and cases, arising under any law of the United States, granting or confirming to in

Upon this Act, Mr. Justice Story said: "Then it is suggested, that the grant of the patent, by the Act of Congress of 1839, ch. 14, is not constitutional; for it operates retrospectively to give a patent for an invention, which, though made by the patentee, was in public use, and enjoyed by the community, at the time of the passage of the act. But this objection is fairly put at rest by the decision of the Supreme Court, in the case of the Patent of Oliver Evans. Evans v. Eaton, 3 Wheat. 454. For myself, I never have entertained any doubt of the Constitutional authority of Congress to make such a grant. The power is general, to grant to inventors; and it rests in the sound discretion of Congress to say, when and for what length of time, and under what circumstances, the patent for an invention shall be granted. There is no restriction which limits the power of Congress to cases where the invention has not been known or used by the public. All that is required is, that the patentee should be the inventor. The only remaining objection is, that the act is unconstitutional, because it makes the use of a machine, constructed and used before the time of the passage of the Act of 1834, ch. 213, and the grant of the patent under the Act of 1839, ch. 14, unlawful, although it has been formerly decided, that, under the Act of 1834, the plaintiff had no valid patent; and so the defendant, if he constructed and used the machine during that period, did lawful acts, and cannot now be retrospectively made a wrongdoer. If this were the true result of the language of the act, it might require a good deal of consideration. But I do not understand that the act gives the patentee any damages, for the construction or use of the machine, except after the grant of patent under the Act of 1839, ch. 14. If the language of the act were ambiguous, the Court would give it this construction, so that it might not be deemed to create rights retrospectively, or to make men liable for damages, for acts lawful at the time when they were done. The Act of Congress, passed in general terms, ought to be so construed, if it may, as to be deemed a just exercise of constitutional authority; and not only so, but it ought to be construed not to operate retrospectively, or ex post facto, unless that construction is unavoidable; for, even if a retrospective act is or may be constitutional, I think I may say, that, according to the theory of our jurisprudence, such an interpretation is never adopted without absolute necessity; and courts of justice always lean to a more benign construction. But, in the present case, there is no claim for any damages but such as have accrued to the patentee from a use of his machine, since the grant of the patent under the Act of 1839, ch. 14."

ventors 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 Court having the powers and jurisdiction of a Circuit Court, which courts shall have power, upon bill in equity filed by any party aggrieved, in any such case, to grant injunctions, according to the course and principles of Courts of Equity, to prevent the violation of the rights of any inventor, as secured to him by any law of the United States, on such terms and conditions as said courts may deem reasonable: Provided, however, that, from all judgments and decrees, from any such court rendered in the premises, a writ of error or appeal, as the case may require, shall lie 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 Circuit Courts, and in all other cases in which the Court shall deem it reasonable to allow the same."1

§ 406. The jurisdiction of the Circuit Courts of the United States embraces, therefore, all cases, both at law and in equity, arising under the Patent Laws, without regard to the citizenship of the parties, or the amount in controversy; and it seems to be the better opinion, that this jurisdiction is exclusive, and that the state courts cannot entertain a suit for the infringement of a patent, or to declare a patent void.2

§ 407. When a case is sent to the Supreme Court of the United States, under the discretion conferred upon the court below, by the seventeenth section of the Act of 1836, the whole case is to go up. The word "reasonable," in the sta

1 See, also, the Act, Feb. 15, 1819, c. xix.

2 3 Kent's Com. 368; Story's Com. on the Constitution. The course of legislation on the subject of patents, may be seen in the Appendix of this work.

tute, applies to the "cases," rather than to the points of the cases.1

§ 407 a. A bill filed on the equity side, to set aside an assignment, is not one of the "cases" contemplated by the act; since the dispute does not arise under any act of Congress, nor does the decision depend upon the construction of any law in relation to patents.2

1 Hogg v. Emerson, 6 Howard, 439, 478.

The Court there said: "It may be very proper for the court below to examine those points separately, and with care, and, if most of them present questions of common law only, and not of the construction of the Patent Acts, and others present questions under those acts, which seem very clearly settled or trifling in their character, not to grant the writ of error at all. It might, then, well be regarded as not' reasonable' for such questions, in a controversy too small in amount to make the writ a matter of right to persons, if standing on an equal footing with other suitors. But, we think, from the particular words used rather than otherwise, that the act intended, if the Court allowed the writ as 'reasonable' at all, it must be for the whole case, or, in other words, must bring up the whole for consideration."

2 Wilson v. Sandford, 10 Howard, 99, 101. In this case, the Court said: "The object of the bill was to set aside a contract, made by the appellant with the appellees, by which he had granted them permission to use, or vend to others to be used, one of Woodworth's planing-machines, in the cities of New Orleans and Lafayette; and also to obtain an injunction against the further use of the machine, upon the ground that it was an infringement of his patent-rights. The appellant states, that he was the assignee of the monopoly in that district of country, and that the contract which he had made with the appellees had been forfeited, by their refusal to comply with its conditions. The license in question was sold for fourteen hundred dollars, a part of which, the bill admits, had been paid. The contract is exhibited with the bill, but it is not necessary, in this opinion, to set out more particularly its provisions.

The appellees demurred to the bill, and, at the final hearing, the demurrer was sustained, and the bill dismissed. And the case is brought here by an appeal from that decree.

The matter in controversy between the parties arises upon this contract, and it does not appear that the sum in dispute exceeds two thousand dollars. On the contrary, the bill and contract exhibited with it show that it is below

that sum. An appeal, therefore, cannot be taken from the decree of the Circuit Court, unless it is authorized by the last clause in the seventeenth section of the Act of 1836.

The section referred to, after giving the right to a writ of error or appeal, in cases arising under that law, in the same manner, and under the same circumstances, as provided by law in other cases, adds the following provision:- And in all other cases in which the Court shall deem it reasonable, to allow the same.' The words, 'in all other cases,' evidently refer to the description of cases provided for in that section, and where the matter in dispute is below two thousand dollars. In such suits, no appeal could be allowed, but for this provision.

The cases specified, in the section in question, are, 'all actions, suits, controversies, on cases arising under any law of the United States, granting or confirming to inventors the exclusive right to their inventions or discoveries.' The right of appeal to this Court is confined to cases of this description, when the sum in dispute is below two thousand dollars. And the peculiar privilege given to this class of cases was intended to secure uniformity of decision, in the construction of the Act of Congress in relation to patents.

Now, the dispute, in this case does not arise under any act of Congress; nor does the decision depend upon the construction of any law in relation to patents. It arises out of the contract stated in the bill, and there is no act of Congress providing for or regulating contracts of this kind. The rights of the parties depend altogether upon common law and equity principles. The object of the bill is, to have this contract set aside and declared to be forfeited; and the prayer is, that the appellant's reinvestiture of title to the license granted to the appellees, by reason of the forfeiture of the contract, may be sanctioned by the Court,' and for an injunction. But the injunction he asks for is to be the consequence of the decree of the Court, sanctioning the forfeiture. He alleges no ground for an injunction, unless the contract is set aside. And if the case made in the bill was a fit one for relief in equity, it is very clear that, whether the contract ought to be declared forfeited or not, in a Court of Chancery, depended altogether upon the rules and principles of equity, and in no degree whatever upon any act of Congress concerning patent-rights. And, whenever a contract is made in relation to them, which is not provided for and regulated by Congress, the parties, if any dispute arises, stand upon the same ground with other litigants, as to the right of appeal; and the decree of the Circuit Court cannot be reversed here, unless the matter in dispute exceeds two thousand dollars."