described in the license restriction. Held that the act of defendant constituted contributory infringement of complainant's patent.

This court does not prescribe the jurisdiction of courts, Federal or state, but only gives effect to it as fixed by law.

A suit for infringement which turns upon the scope of the patent and privileges of the patentee thereunder presents a case arising under the patent law.

In determining questions of jurisdiction this court never shirks the responsibility of maintaining the lines of separation defined in the Constitution and the laws made in pursuance thereof.

A patentee who has leased his patent to a licensee under restrictions may waive the tort involved in infringement and sue upon the broken contract; but in that event the case is not one arising under the patent laws and, in absence of diversity of citizenship, a Federal court has no jurisdiction thereof. Whether the case is one of infringement, of which the Federal court has jurisdiction or of contract of which it has not jurisdiction, is often determined by the remedy which complainaint seeks.

The test of jurisdiction is whether complainant does or does not set up a right, title or interest under the patent laws or make it appear that a right or privilege will be defeated by one, or sustained by another, construction of those laws.

Whether a patentee may lawfully impose restrictions on the use of a patent and whether the violation thereof constitutes infringement are questions under the patent law.

A patentee may elect to sue his licensee upon the broken contract, or for forfeiture for breach, or for infringement. While an absolute and unconditional sale operates to pass the patented article outside of the boundaries of the patent, a patentee may by a conditional sale so restrict the use of his vendee within specific boundaries of time, place or method as to make prohibited uses outside of those boundaries constitute infringement and not mere breach of collateral contract.

The extent of a license to use, which is carried by a sale of a patented article depends upon whether any restrictions were placed upon the sale, and if so what they were, and how they were brought home to the vendee; and where, as in this case, a restriction is plainly placed upon the article itself, a sale carries with it only the right to use within the limits specified, and any other use is an infringing one. The patent statute is one creating and protecting a true monopoly granted to subserve a broad public policy, and it should be construed so as to give effect to a wise and beneficial purpose.

The monopoly of a patent extends to the right of making, selling and using, and each is a separable and substantial right.

A patentee may exclude others from the use of his invention although he does not use it himself. The Paper Bag Patent Case, 210 U. S. 405. Although a contract in regard to use of a patent may include interstate commerce and restrain interstate trade, if it involves only the reasonable and legal conditions imposed under the patent law, it is not within the prohibitions of the Sherman Act. Bement v. National Harrow Co., 186 U. S. 70.

Contributory infringement is the intentional aiding of one person by another in the unlawful making, selling or using of a patented invention.

The larger right of exclusive use of the patentee embraces the lesser

one of only permitting the licensee to use upon prescribed conditions. Courts cannot declare the monopoly created by Congress under authority of the Constitution to be unwise; Congress alone has power to prescribe what restraints shall be imposed. Where a great majority of the courts to which Congress has committed the interpretation of a law have construed it, so that the line of decisions has become a rule of property, this court should not, in the absence of clear reason to the contrary, overrule those decisions on certiorari, and so held in this case after reviewing the decisions sustaining the rule of contributory infringement.

A bare supposition that an article adapted for use in connection with a patented machine sold under restricted license is to be used in connection therewith will not make the vendor a contributory infringer, but where the article so sold is only adapted to an infringing use, there is a presumption that it is intended therefor.

Questions certified by Circuit Court of Appeals on appeal from 149 Fed. Rep. 424, answered in affirmative.

THE facts, which involve the power of a patentee to enforce a license restriction as to the use of the patented article, and the determination of what constitutes contributory infringement, are stated in the opinion.

Mr. Arthur v. Briesen, with whom Mr. Antonio Knauth was on the brief, for Henry:

The attempted restriction on the sale of the article is void at common law. United States v. Sequi, 10 Pet. 306; United States v. Rodman, 15 Pet. 130, 139; Merrifield v.

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Cobleigh, 4 Cush. 178. See also Packard v. Ames, 16 Gray, 327; 6 Am. & Eng. Ency., 438, note 5.

By the common law, the absolute property in the article which passes upon an ordinary sale "denotes a full and complete title and dominion over it," which is incompatible with a continued control over it in some shape, matter or respect by the seller of the article. 2 Kent's Com., 14th ed., 347; 2 Blackstone's Comm., 4th ed., 1, 154, 389, 446; Benjamin on Sales, 6th ed., 746.

The only kind of conditional sale known to our law is a sale in which the transfer of title to the things sold to the purchaser, or his retention of it, is made dependent upon the performance of some condition. The chief point of distinction between a condition subsequent and a covenant is that a breach of the former subjects the estate to a forfeiture; a breach of the latter is a ground for damages. Am. & Eng. Ency. Law, 503; Jewett v. Lincoln, 14 Maine, 116; Green v. Bennett, 23 Michigan, 464; and see Park v. Hartman, 153 Fed. Rep. 24; affirmed, 212 U. S. 588; Taddy v. Sterious, 1 Chan. 354; McGruther v. Pitcher, 2 Chan. 306 (1904).

The patent statute does not interfere with the working of the rule of the common law as applied to patented articles which have been sold by the patentee by an absolute sale passing the title, not conditionally, but absolutely. Wilson v. Rousseau, 4 How. 646; Bloomer v. McQuewan, 14 How. 539, 549; Bloomer v. Millinzer, 1 Wall. 340; Chaffee v. Boston Belting Co., 22 How. 217-222; Goodyear v. Beverly Rubber Co., 1 Cliff. 348, 354; Mitchell v. Hawley, 16 Wall. 544-547; Adams v. Burke, 17 Wall. 453; Webber v. Virginia, 103 U. S. 344, 348; Paper Bag Cases, 105 U. S. 766; Hobbie v. Jennison, 149 U. S. 355; Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425; Keeler v. Standard Folding Bed Co., 157 U. S. 659.

It must be admitted, however, that the question, whether a mere notice on the article restricting the right of sale by

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conditions as to price, can be enforced under the patent law in the absence of any agreement made by the purchaser, has not been decided by this court. Bobbs-Merrill Co. v. Straus, 210 U. S. 339, 343, and Cortelyou v. Johnson, 207 U. S. 196, are not authority, nor is Bement v. Harrow Co., but see Re Brosnaham, Jr., 18 Fed. Rep. 62.

If the patentee desires to secure to himself the continued control over the use of the patented article in the hands of others, he may do so by leasing it upon suitable conditions, terminating the lease in case of a breach of the condition or by selling it under conditional sale, providing that upon breach of the condition, the title to the article will revert to the patentee. Bill Publishing Co. v. Smythe, 27 Fed. Rep. 914.

The leading cases in the courts below, Button Fastener Co. v. Eureka Specialty Co., 77 Fed. Rep. 288, and Courtelyou v. Johnson, 145 Fed. Rep. 933, can be distinguished from the case at bar, as each was rendered upon a proper conditional sale at common law, while in this case no such conditional sale is found; and further, that it was sustainable as an action on contract.

Edison Phonograph Co. v. Kaufmann, 105 Fed. Rep. 960 was decided upon the supposed authority of Dickerson v. Matheson, 57 Fed. Rep. 524, and Dickerson v. Tingling, 84 Fed. Rep. 192, 195, but there is no true analogy between a purchase in a foreign country and importation of the article into this country, treated in those cases and a purchase from the patentee in this country under "restrictions," and see also Edison Phonograph Co. v. Pike, 116 Fed. Rep. 863.

In view of the statements of this court in the more recent decision of Bobbs-Merrill Co. v. Straus,.supra, the statement of Judge Lowell concerning the approval by this court of the broad doctrines laid down in the Button Fastener Case must be considered doubtful; see Green v. Bennett, 23 Michigan, 464; 6 Am. & Eng. Ency. 437.

If the sale is to be considered a conditional sale which

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can be rescinded upon breach of the condition, the seller cannot rescind the contract and at the same time retain the benefits of the contract. He must, as a condition precedent to rescission, restore or offer to restore the price paid for the goods. 35 Cyc. 144.

That this is not a suit arising under the patent statute, but one arising from the contract and having for its object the enforcement of the contract seems manifest both on principle and on authority. Excelsior Pipe Co. v. Pacific Bridge Co., 185 U. S. 282.

The license restriction is void because unreasonable and tending to create an unlawful, permanent monopoly in the patentee in something which is not protected by his patent.

The notice of restriction is not connected with any patent or patents, nor is there any time limit stated as to the obligation of the purchaser of the machine to buy the supplies for it only from the complainant, which supplies are not even completely enumerated, and may comprise oil, blotting paper, rollers, copying paper, and anything else which may be useful in the handling of the machine. Cortelyou v. Johnson, 145 Fed. Rep. 933; Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425.

Machines like the mimeograph are not purchased with the amount of care and circumspection with which a piece of real estate is purchased; they are ordinary articles of trade like any other hand machines and the purchaser very likely either pays no attention to the notice of restriction, or if he does see it, will think that it is impossible to insist on such a condition, because the maker of the machines cannot possibly follow them into the hands of many thousands of purchasers to watch over their use.

A court of equity should never by injunction imply obligations on one party, when there are no clear and definite obligations imposed upon the other party to the contract. Lawrence v. Dixey, 119 App. Div. (N. Y.) 295; Chicago Railroad Company v. Dane, 43 N. Y. 240; Rafolo