Supreme Court of the United States

Briggs v. United Shoe MacHinery Co.

1915 U.S. LEXIS 1523 · 239 U.S. 48 · 36 S. Ct. 6 · 60 L. Ed. 138

November 1, 1915 · Docket 638

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Headnotes

Generated summaries

Headnote 1
15.21 Civil Procedure and Courts Law > Subject Matter Jurisdiction Law
Only actions that seek to obtain a patent after a refusal or that allow a patentee to cancel an interfering patent fall within federal jurisdiction. Claims outside those statutory grants do not arise under the patent laws.
Headnote 2
15.21 Civil Procedure and Courts Law > Subject Matter Jurisdiction Law
The plaintiff’s suit sought royalty enforcement and an injunction to annul a later patent, but a contract‑based royalty claim alone is not a patent‑law action, a principle settled by repeated decisions.
Headnote 3
15.21 Civil Procedure and Courts Law > Subject Matter Jurisdiction Law 15.21.11 Civil Procedure and Courts Law > Subject Matter Jurisdiction Law > Federal Question Jurisdiction Law
Equity jurisdiction may be exercised only in cases already within the jurisdiction defined by statute. The plaintiff’s reliance on the courts’ general equity powers was misplaced because the complaint did not fall within a congressional grant.
Headnote 4
15.21 Civil Procedure and Courts Law > Subject Matter Jurisdiction Law
Allegations that a patent was obtained by fraud do not confer jurisdiction on private parties; such actions are reserved to the United States, so a plaintiff cannot base jurisdiction on a fraud claim.
Headnote 5
The Court reiterated that this principle is settled by repeated decisions, emphasizing that royalty enforcement suits are outside the scope of federal patent jurisdiction.
Headnote 6
The Court explained that allegations of fraud in obtaining a patent cannot confer jurisdiction because canceling a patent for fraud is a power reserved exclusively to the federal government.
Headnote 7
47.12.48 Intellectual Property Law > Patent Law > Reasonable Royalty Damages Law
The plaintiff sought royalty payments from a contract selling patents, an injunction to annul a later patent, and a declaration of ownership. The district court dismissed for lack of jurisdiction, holding the suit was not a patent‑law action.
Headnote 8
47.12.48 Intellectual Property Law > Patent Law > Reasonable Royalty Damages Law
The plaintiff’s brief argued for jurisdiction based on the court’s equitable powers, but the Court noted that such powers apply only where Congress has already conferred jurisdiction.
Headnote 9
47.12.48 Intellectual Property Law > Patent Law > Reasonable Royalty Damages Law
The plaintiff’s complaint alleged fraud in obtaining the Eppler patent, but the Court held that such a claim cannot confer jurisdiction because only the United States may maintain that kind of annulment action.

Opinion

Memorandum opinion by

Mr. Justice Van Devanter,

by direction of the court.

Whether this suit between citizens of the same State is one arising under the patent laws is the only question presented by this direct appeal under Jud. Code, § 238. The District Court gave a negative answer to the question and dismissed the suit for want of jurisdiction.

The bill shows that its dominant and'ultimate object is to enforce payment of royalties reserved to the plaintiff by a contract whereby he sold to the defendant certain existing and contemplated patents for improvements in shoe-sewing machines, and that to clear the way for a recovery of all the royalties claimed it seeks the annulment of a patent for such an improvement issued to Andrew Eppler after the contract and then assigned to the defendant, and also an adjudication that the plaintiff is entitled to a patent for the improvement covered by the Eppler patent.

A suit for royalties reserved upon the sale of a patent right is not a suit arising under the patent laws. This is settled by repeated decisions. Albright v. Teas, 106 U. S. 613; Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 285; Geneva Furniture Co. v. Karpen, 238 U. S. 254, 259, and cases eited.

While the patent laws (Rev. Stat., §§ 4915,4918) permit an applicant for a patent whose application has been refused by the Commissioner of Patents, or by the Court of Appeals 1 of the District of Columbia upon appeal from the Commissioner, to establish his right to receive a patent by a suit in equity, and also permit a patentee to maintain a suit in equity against the owner of an inter fering patent to annul the latter, the present bill falls so far short of presenting a case within either section that it reasonably cannot be said to invoke the application of either. Recognizing that this is so, counsel for the plaintiff in his brief not only frankly concedes that he finds no statute in point, but endeavors to maintain the jurisdiction of the District Court by a reference to the general powers of Federal courts when sitting as courts of equity, evidently forgetting that such powers can be exerted only in cases otherwise within the jurisdiction of those courts as defined by Congress.

Some stress is laid in the brief upon portions of the bill charging fraud in the procurement of the Eppler patent, but as only the United States can maintain a bill to annul the patent on that ground (Mowry v. Whitney, 14 Wall. 434; United States v. Bell Telephone Co., 128 U. S. 315, 368; United States v. American Bell Telephone Co., 159 U. S. 548, 555) these allegations cannot affect the solution of the question of jurisdiction here presented.

Our conclusion is that this is not a suit arising under the patent laws.

Decree affirmed.

See § 9, act February 9, 1893,.c. 74, 27 Stat. 434.

Case brief

Citation data as of August 1, 2026

Summary

The plaintiff, a citizen of the State, contracted with the defendant—also a citizen of that State—to sell existing patents and contemplated patents covering shoe‐sewing‐machine improvements, reserving royalty payments on their use. After the contract was executed the Patent Office issued a patent to Andrew Eppler for an improvement within the contemplated scope, and the defendant acquired that patent. Relying on the contract, the plaintiff sued in federal equity for (1) enforcement of the royalty payments, (2) an injunction annulling the Eppler patent, and (3) a declaration that the plaintiff, not the defendant, owned the patent on the improvement. The district court dismissed the action, holding that a claim for royalty enforcement does not “arise under the patent laws” and therefore lies outside federal jurisdiction. The plaintiff appealed directly to the Supreme Court, contending that the Court’s general equitable powers and an allegation of fraud in obtaining the Eppler patent supplied jurisdiction. The Court rejected both arguments, emphasizing that federal jurisdiction over patent matters is limited to the specific statutory remedies—an applicant’s suit to obtain a refused patent and a patentee’s suit to cancel an interfering patent—and that only the United States may sue to annul a patent on a fraud ground. Because the plaintiff’s relief was rooted in a private contract rather than in a statutory patent remedy, the suit did not arise under the patent laws, and the district court’s dismissal for lack of subject‐matter jurisdiction was affirmed. No concurring or dissenting opinions were filed.

Updated August 1, 2026

Statement of Facts

The plaintiff, a citizen of the State, entered into a contract with the defendant—also a citizen of the same State—by which the plaintiff sold to the defendant certain existing patents and contemplated patents covering improvements in shoe‐sewing machines. The contract reserved to the plaintiff a series of royalty payments on the use of those patents. After the execution of the contract, the United States Patent Office issued a patent to Andrew Eppler for an improvement that fell within the scope of the contemplated patents; that patent was subsequently assigned to the defendant. Relying on the contract, the plaintiff brought suit in the United States District Court seeking (1) enforcement of the royalty payments owed under the contract, (2) an injunction annulling the Eppler patent, and (3) a declaration that the plaintiff, rather than the defendant, was entitled to a patent covering the same improvement. The district court dismissed the action for lack of jurisdiction, holding that a suit for contract‐based royalty enforcement is not “a suit arising under the patent laws” and therefore cannot confer federal jurisdiction. The plaintiff appealed the dismissal directly to the United States Supreme Court under Judicial Code § 238. In its brief, the plaintiff attempted to sustain federal jurisdiction by invoking the general equitable powers of the federal courts, and by alleging fraud in the procurement of the Eppler patent; the latter claim was rejected as a matter that only the United States may pursue to annul a patent. The defendant’s position, as reflected in the lower court’s ruling, was that the action did not arise under the patent statutes and therefore fell outside the jurisdiction of the federal courts. The Supreme Court was asked to determine whether the suit, as framed, was a patent‐law action for purposes of federal jurisdiction.

Updated August 1, 2026

Procedural History

United States District Court – The plaintiff filed a suit in equity seeking (i) enforcement of royalty payments under a contract for the sale of existing and contemplated patents, (ii) an injunction annulling the Eppler patent, and (iii) a declaration that the plaintiff, not the defendant, was entitled to a patent on the same improvement. The district court dismissed the action for lack of jurisdiction, holding that a contract‐based royalty suit “is not a suit arising under the patent laws” (citing Albright v. Teas, Excelsior Wooden Pipe Co. v. Pacific Bridge Co., Geneva Furniture Co. v. Karpen). No monetary damages or other relief were awarded.

Direct Appeal to the United States Supreme Court – The plaintiff appealed the dismissal under Judicial Code § 238, contending that the federal courts’ general equitable powers and alleged fraud in the procurement of the Eppler patent conferred jurisdiction. The Supreme Court rejected these arguments, affirming the district court’s dismissal and concluding that the suit “is not a suit arising under the patent laws.” No damages or additional relief were granted.

The opinion provides no record of any intermediate appellate court or of any further proceedings; thus the procedural history consists solely of the district‐court dismissal and the Supreme Court’s affirmance of that dismissal.

Updated August 1, 2026

Issues

I. Substantive Issue
1. Whether the plaintiff’s suit—seeking (a) enforcement of royalty payments under a contract for the sale of existing and contemplated patents, (b) an injunction annulling a subsequently issued patent, and (c) a declaration of ownership of that patent—constitutes “a suit arising under the patent laws” for purposes of federal jurisdiction. II. Procedural Issue
1. Whether the district court erred in dismissing the action for lack of jurisdiction by concluding that the plaintiff’s equity claim for royalty enforcement and patent‐annulment did not fall within the jurisdictional scope of federal courts.

Updated August 1, 2026

Judgment

The Supreme Court affirmed the district court’s decree dismissing the action for lack of jurisdiction.

Updated August 1, 2026

Holding

Substantive Issue – Scope of “a suit arising under the patent laws.”
A claim that seeks only to enforce royalty payments under a contract for the sale of existing or contemplated patents, and that seeks a declaration of ownership or an injunction to annul a later‐issued patent, does not constitute “a suit arising under the patent laws” for purposes of federal jurisdiction. Only actions that invoke the specific statutory remedies provided in the patent statutes (e.g., a suit to obtain a patent after a refusal or a suit by a patentee to cancel an infringing patent) fall within that jurisdictional category.

Procedural Issue – Dismissal for Lack of Subject‐Matter Jurisdiction.
When a complaint does not present a cause of action that falls within the patent statutes, a federal district court may dismiss the case for lack of subject‐matter jurisdiction, and such dismissal is affirmed on appeal. The court’s general equitable powers cannot confer jurisdiction in the absence of a patent‐law claim that Congress has authorized.

Updated August 1, 2026

Rule of Law

Statutory jurisdiction over patent actions is limited to suits that invoke the specific remedies authorized by the patent statutes.
The patent statutes (Rev. Stat. §§ 4915, 4918) expressly permit (a) an applicant whose patent application has been refused to sue in equity to obtain the patent, and (b) a patentee to sue in equity to annul an interfering patent. Only actions that fall within those statutory grants “arise under” the patent laws and therefore lie within federal jurisdiction. United States v. Bell Telephone Co., 128 U.S. 315, 368 (1888) (recognizing the limited statutory bases for federal patent suits).

A contract‐based claim for royalty payments does not “arise under” the patent laws.
The Court held that a suit seeking enforcement of royalties reserved by a contract for the sale of existing or contemplated patents is not a patent‐law action. This rule is “settled by repeated decisions,” including Albright v. Teas, 106 U.S. 613 (1883); Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U.S. 282, 285 (1902); and Geneva Furniture Co. v. Karpen, 238 U.S. 254, 259 (1915).

The federal courts’ general equitable powers cannot create subject‐matter jurisdiction absent a statutory grant.
Equity jurisdiction may be exercised only in cases that are already within the jurisdiction defined by Congress. The Court emphasized that “such powers can be exerted only in cases otherwise within the jurisdiction of those courts as defined by Congress.” See United States v. Mowry, 14 Wall. 434 (1870) (recognizing limits on equitable jurisdiction).

Only the United States may sue to annul a patent on the ground of fraud in its procurement.
The Court noted that allegations of fraud in obtaining the Eppler patent cannot confer jurisdiction because “only the United States can maintain a bill to annul the patent on that ground.” Mowry v. Whitney, 14 Wall. 434 (1870); United States v. Bell Telephone Co., 128 U.S. 315, 368 (1888); United States v. American Bell Telephone Co., 159 U.S. 548, 555 (1895).

Updated August 1, 2026

Reasoning

The Court first stated the governing rule: federal jurisdiction over patent actions is confined to suits that invoke the specific remedies granted by the patent statutes (Rev. Stat. §§ 4915, 4918). Only an applicant denied a patent may sue to obtain it, and only a patentee may sue to annul an interfering patent; no other claims “arise under” the patent laws.

The Court then identified the plaintiff’s “dominant and ultimate object” as enforcement of royalty payments reserved by a contract for the sale of existing and contemplated patents, together with a request to annul a later‐issued patent and a declaration of ownership. Because the relief sought is rooted in a private contract rather than in a statutory patent remedy, the claim does not fall within the statutory categories identified in the rule.

Relying on a line of precedent, the Court reiterated that a suit for royalties on a patent sale is not a patent‐law action. It cited Albright v. Teas, Excelsior Wooden Pipe Co. v. Pacific Bridge Co., and Geneva Furniture Co. v. Karpen as authority that such contractual royalty suits are outside federal jurisdiction.

The Court examined the plaintiff’s attempt to invoke the “general powers of Federal courts when sitting as courts of equity” and rejected it. It emphasized that equitable jurisdiction is permissive only when the case already lies within the subject‐matter jurisdiction granted by Congress; equity cannot create jurisdiction where none exists.

The plaintiff also alleged fraud in the procurement of the Eppler patent, hoping that this allegation would confer jurisdiction. The Court noted that, under Mowry v. Whitney and United States v. Bell Telephone Co., only the United States may bring a bill to annul a patent on a fraud ground, so the fraud allegation does not alter the jurisdictional analysis.

Applying the rule to the facts, the Court concluded that the plaintiff’s complaint does not invoke either of the statutory patent remedies and therefore does not “arise under” the patent laws. Consequently, the district court’s dismissal for lack of subject‐matter jurisdiction was proper.

The Court affirmed the district court’s decree, holding that the suit is not a patent‐law action and that federal courts lack jurisdiction over the plaintiff’s contractual royalty claim, the requested injunction, and the declaratory relief concerning patent ownership.

Updated August 1, 2026

Concurring/Dissenting Opinions

Authoring Justice: None – no separate concurring or dissenting opinions were filed.
Type of Opinion: None – the Court issued a single memorandum opinion authored by Justice Van Devanter, without any concurrences or dissents.
Summary of Reasoning: N/A – the Court’s reasoning is fully contained in the majority memorandum opinion; therefore there is no additional reasoning to summarize.

Updated August 1, 2026

Case Relevance

This decision is the controlling authority that limits federal subject‐matter jurisdiction over patent‐related disputes to the narrow statutory remedies enumerated in the patent statutes—namely, an applicant’s equity suit to obtain a refused patent and a patentee’s equity suit to cancel an interfering patent—so that any claim whose “dominant and ultimate object” is rooted in a private contract for royalty payments, a request for an injunction to annul a later‐issued patent, or a declaratory ownership action does not “arise under” the patent laws; the Court’s holding therefore resolves the substantive issue by expressly excluding such contractual and equitable relief from federal jurisdiction and resolves the procedural issue by affirming dismissal for lack of jurisdiction, a rule that applies broadly to any case where the plaintiff’s relief is based on contract or general equity rather than on the specific statutory patent remedies, regardless of the presence of fraud allegations (which, as the Court notes, confer jurisdiction only on the United States); consequently, the case is a vital citation for any party seeking to defeat a federal‐court forum in patent‐related royalty or ownership disputes, to demonstrate that equity powers cannot create jurisdiction absent a statutory grant, and to underscore the limited reach of “arising under” jurisdiction in patent matters, while it leaves untouched questions concerning the scope of state‐court jurisdiction or the merits of patent‐ownership disputes once properly pleaded in a forum with jurisdiction.

Updated August 1, 2026

Relevant Quotes

Quoted text: "A suit for royalties reserved upon the sale of a patent right is not a suit arising under the patent laws. This is settled by repeated deci sions. Albright v. Teas, 106 U. S. 613 ; Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U. S. 282, 285 ; Geneva Furniture Co. v. Karpen, 238 U. S. 254, 259 , and cases eited."
Bluebook pinpoint citation: 239 U.S. 48
Explanation: Establishes the core principle that a contract‑based royalty claim does not constitute a suit arising under the patent laws, citing controlling precedent.

Quoted text: "(Rev. Stat., §§ 4915,4918) permit an applicant for a patent whose application has been refused by the Commissioner of Patents, or by the Court of Appeals 1 of the District of Columbia upon appeal from the Commissioner, to establish his right to receive a patent by a suit in equity, and also permit a patentee to maintain a suit in equity against the owner of an inter

fering patent to annul the latter, the present bill falls so far short of presenting a case within either section that it reasonably cannot be said to invoke the application of e ither. Recognizing that this is so, counsel for the plaintiff in his brief not only frankly concedes that he finds no statute in point, but endeavors to maintain the jurisdiction of the District Court by a reference to the general powers of Federal courts when sitting as courts of equity, evidently forgetting that such powers can be exerted only in cases otherwise within the jurisdiction of those courts as defined by Congress."
Bluebook pinpoint citation: 239 U.S. 48
Explanation: Sets out the statutory limits on federal patent jurisdiction—only the remedies enumerated in Rev. Stat. §§ 4915, 4918 qualify—and notes that equity powers cannot create jurisdiction where Congress has not granted it.

Quoted text: "Some stress is laid in the brief upon portions of the bill charging fraud in the procurement of the Eppler patent, but as only the United States can maintain a bill to annul the patent on that ground (Mowry v. Whitney, 14 Wall. 434 ; United States v. Bell Telephone Co., 128 U. S. 315, 368 ; United States v. American Bell Telephone Co., 159 U. S. 548, 555 ) these allegations cannot affect the solution of the question of jurisdiction here presented."
Bluebook pinpoint citation: 239 U.S. 48
Explanation: Explains that allegations of fraud in obtaining a patent do not confer jurisdiction because only the United States may bring a bill to annul a patent on that ground.

Quoted text: "Our conclusion is that this is not a suit arising under the patent laws."
Bluebook pinpoint citation: 239 U.S. 48
Explanation: Summarizes the Court’s holding that the action at issue is not a suit arising under the patent laws, affirming dismissal for lack of subject‑matter jurisdiction.

Updated August 1, 2026

Synthesis

Not available

All jurisdictions

Not available.

Additional Comments

Briggs v. United Shoe MacHinery Co. · 239 U.S. 48

Monetary awards

No monetary awards found.

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Metadata

Court

Supreme Court of the United States

Decided

November 1, 1915

Docket

638

Precedential status

Published

Briggs v. United Shoe MacHinery Co.

Citing opinions

Headnotes

Opinion