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of White's failure to make the assignment; that, White having failed for more than five days after the entry of the decree to execute and deliver the assignment, the special commissioner, on January 31, 1878, received for White from Thompson the notes of White and the assignment of income mentioned in the decree, and executed and delivered to Thompson a deed transferring to the latter, as of June 13, 1876, a one-fourth interest in the two inventions secured by the said two patents, with a corresponding one-fourth interest in all patents that White might have obtained since February 13, 1875, or might thereafter obtain, on improvements theretofore or thereafter made by White on said inventions, and a corresponding interest in all reissues and extensions of the patents; that that deed was duly recorded in the Patent Office; that the other commissioner, before referred to, took depositions as to the account, and on October 25, 1880, returned them and his report to the Superior Court of the city and county of San Francisco, which by law had superseded the said District Court; that the cause came on for hearing upon White's motion for a final decree on the report, and, the judge who entered the decree of November 22, 1877, being no longer on the bench, the motion was heard and determined by a different judge, who, treating that decree as a nullity, entered an order, on February 4, 1881, against the objection of Thompson, setting aside and vacating all proceedings in the cause subsequent to the filing of the answer, restoring the cause to the calendar for trial, and charging Thompson with all the costs accrued up to the time of the order; that afterwards, on February 15, 1881, on the motion of White and against the objection of Thompson, the order of February 4, 1881, was amended so as to declare that the decree of November 22, 1877, and also the conveyance of January 31, 1878, and all proceedings in the action subsequent to the filing of the answer, were vacated and set aside, and the cause restored to the calendar for trial, and that Thompson should be charged with all the costs of the suit; that on April 5, 1881, Thompson appealed to the Supreme Court of California from the action of the Superior Court in its orders of February 4 and

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15, 1881, and the appeal was undetermined and still pending; that at the time of the grievances mentioned in the bill in this suit Thompson was, and still is, the owner of and entitled to one-fourth of the inventions and patent rights mentioned in the bill, and to make, use and vend the furnaces; and that every furnace involving the said inventions, made, used and sold by the defendants, was made, used and sold under Thompson's said right and by virtue of his authority.

The plaintiff, in August, 1883, put in a replication to that plea. On April 1, 1884, the defendants filed a supplement to their plea, setting forth that on June 15, 1883, the Supreme Court of California sustained the appeal of Thompson, reversed the said orders of the Superior Court of February 4 and 15, 1881, and remanded the cause to that court for further proceedings not inconsistent with the opinion of said Supreme Court.

On August 11, 1884, the Circuit Court of the United States, on a hearing on the supplementary plea, overruled it, with leave to the defendants to file an amended plea. On August 25, 1884, they filed a plea setting up that Thompson, at the time of the grievances mentioned in the bill, was and still is the owner of and entitled to one-fourth of the inventions and patent rights mentioned in the bill, and entitled to make, use and vend the said furnaces; and that every furnace involving said inventions, made, used and sold by the defendants, was made, used and sold under Thompson's said right and by virtue of his authority. To the plea a replication was filed by the plaintiff in September, 1884. On the 29th of April, 1885, the Circuit Court entered an order overruling the plea and assigning the defendants to answer the bill.

On May 29, 1885, the defendants put in an answer to the bill, denying that the plaintiff, since September 20, 1876, had been and still was the exclusive owner of the two patents, denying that they had, without right, manufactured, used and sold furnaces covered by said patents, denying that they had infringed upon or violated any rights held by the plaintiff under the patents, and setting up that the defendant Thompson was and, ever since June 13, 1876, had been, the owner of

Opinion of the Court.

one-fourth of the inventions covered by the patents, and that every furnace manufactured, used and sold by the defendants, involving the said inventions, was manufactured, used and sold under the authority and license of Thompson as owner aforesaid of one-fourth of said inventions. A replication was filed to the answer in June, 1885.

On the 26th of February, 1886, a stipulation signed by the solicitors for the respective parties was filed, headed "Stipulation of submission and agreed facts," wherein it was admitted on behalf of the defendants, that after June 13, 1876, and before November 22, 1877, the defendants made and sold more than four furnaces involving devices and inventions described in and covered by the two patents in question, and that the said making and selling were done at the instance and by the direction of the defendant Thompson, “who asserts that he had authority so to do under the contract, decree and deed hereinafter mentioned." The stipulation then sets out the agreement of February 13, 1875, between White and Thompson, the complaint of Thompson against White filed August 31, 1876, in the suit in the state court, the answer of White to that complaint, the decree of November 22, 1877, the deed of January 31, 1878, the orders of February 4 and 15, 1881, made in the state court, the bill of exceptions for a second appeal to the Supreme Court of California, (which contains an order made by the Superior Court of the city and county of San Francisco, on August 26, 1884, ordering judg ment in favor of Thompson against White and that White convey to Thompson a one-fourth interest in the patents and a corresponding one-fourth interest in all patents and patentable improvements on said inventions made by White prior to June 13, 1876, upon the delivery by Thompson to White of the notes mentioned in the complaint in the suit in the state court and the payment by Thompson to White of $4000,) the report of the commissioner in the suit of Thompson against White as to profits and damages, and copies of the two patents. By the stipulation it was admitted by the defendants that nothing had been paid by Thompson to White under the decree of August 26, 1884; and it was further agreed that

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the cause should be brought on for hearing upon the pleadings therein and in accordance with the terms of the stipulation.

The cause having been heard by the Circuit Court of the United States for the Northern District of California, to which it had been transferred, that court entered a decree on October 10, 1887, that the bill be "dismissed for want of jurisdiction." From that decree the plaintiff appealed to this court. He having since died, his administrator has been substituted as appellant.

We are of opinion that the decree of the Circuit Court must be reversed. That decree was that the bill of complaint be dismissed for want of jurisdiction. The jurisdiction is clear on the face of the bill. The case stated by the bill arises on the patents. There is no suggestion in the bill that there was ever any contract or agreement, or attempt to make one, between the plaintiff and the defendant Thompson, or that either the plaintiff or the defendants claim anything under any contract. The averment in the bill that the defendants have made, used and sold machines containing the patented inventions without the license of the plaintiff and without any right so to do, cannot be regarded as raising any question on any alleged license or contract.

The Circuit Court did not decide the case upon the facts contained in the stipulation, nor did it adjudicate upon the legal effect of those facts. It did not hold that those facts were facts in the case and then dismiss the bill because the existence of those facts as facts removed the case from the cognizance of the court. It appears to have dismissed the bill on the simple ground that the defendants set up a contract of license from White. The bill being purely a bill for infringement, founded upon patents, what was set up by the defendants was set up as a defence and as showing the lawful right in them to do what they had done, and as a ground for the dismissal of the bill because they had not infringed the patents, although they had made and sold more than four furnaces involving the inventions covered by the patents. The decree was not one upon the facts of the case, but was

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simply a decree that the court had no jurisdiction to try the case. The subject matter of the action, as set forth in the bill, gave the court jurisdiction, and exclusive jurisdiction, to try it. All of the parties to the suit were citizens of California, and if jurisdiction did not exist under the patent laws it did not exist at all.

Reliance is placed by the defendants upon the cases of Wilson v. Sandford, 10 How. 99; Hartell v. Tilghman, 99 U. S. 547; and Albright v. Teas, 106 U. S. 613.

In Hartell v. Tilghman, supra, the head-note of the report is that "a suit between citizens of the same State cannot be sustained in the Circuit Court, as arising under the patent laws of the United States, when the defendant admits the validity and his use of the plaintiff's letters patent, and a subsisting contract is shown governing the rights of the parties in the use of the invention." But in the case now before the court, the Circuit Court did not find that there was a subsisting, valid contract governing the rights of the defendants in the use of the invention. The Circuit Court found nothing as to the existence or validity of the contract, decree or deed, mentioned in the stipulation. The stipulation provides that, at the hearing, the contract, complaint, answer, decree and deed, set forth in the stipulation, may be offered in evidence, subject to such objections as might be urged against the originals thereof. The stipulation further states that the defendants do not admit that anything is due to the plaintiff from Thompson, and that they do admit that nothing had been paid by Thompson to the plaintiff under the decree of the state court of August 26, 1884, and since the making thereof. All these matters and questions ought to have been adjudicated by the Circuit Court before it could find ground to determine whether or not it should dismiss the bill. Until it had so adjudicated those questions, the decision in the case of Hartell v. Tilghman could not apply.

In that case, a reference to the bill, in the records of this court, as filed in the Circuit Court November 2, 1874, shows that Tilghman, in addition to setting out his patent, stated that it had been his practice to put up such fixtures as were