Binney v. Annan

Morton, J.

The bill states a case which entitles the plaintiff to relief. It sets forth, in substance, that the plaintiff was the proprietor of a new and useful invention for a machine for making paper bags, and that, for the purpose of perfecting the invention and procuring patents therefor, he employed Annan, a skilled mechanic, under a written contract, by which Annan was to labor for the plaintiff in perfecting said machine, to take all necessary steps to patent any inventions or improvements relating to paper bags or any machinery therefor, and to assign to the plaintiff all his rights therein, and all patents therefor. It alleges that An-nan has taken out several patents for inventions made by him on paper bag machines, which were issued to himself and the other defendant, Herbert S. Merrill, as his assignee; and that he and Merrill became confederates to defraud the plaintiff, and are mak *95 ing and selling machines under said patents, in fraud of the plaintiff ; and it prays that they may be required to assign the said patents and machines to him, and to account for the profits made by them in the manufacture and sale of such machines. The defendants demur to the bill, and attempt to sustain their demurrer upon the ground that the question raised by the bill is one exclusively within the jurisdiction of the federal authorities, and therefore cannot be entertained by this court. Their argument is, that the plaintiff seeks relief upon the ground that he, and not Annan, was the original inventor of the machines for which patents have been issued, and that upon this question the decision of the commissioner of patents is conclusive. We do not so understand the allegations of the plaintiff’s bill. The plaintiff does not allege that the patents obtained by Annan are invalid. On the contrary, he puts his case upon the ground that they were rightfully obtained by Annan, and ought to be assigned to him according to the agreement between the parties. There is no conflict involved between this court and the federal tribunals. Ho question is raised as to the legality or propriety of the action of the commissioner of patents, nor are we asked to revise it; but the plaintiff seeks to enforce the performance of a contract for the conveyance* to him of the patent rights and machines. The question raised by the bill and demurrer is one of which the commissioner of patents could not entertain jurisdiction, but which is within the cognizance of the state courts.

Demurrer overruled.