ERROR TO THE SUPREME COURT OF THE STATE OF NEW YORK.
MR. JUSTICE BROWN, after stating the case, delivered the opinion of the court.
It is well settled by a long series of adjudications that, to give this court jurisdiction by writ of error to a state court, it must appear affirmatively, not only that a federal question was presented for decision to the highest court of the State having jurisdiction, but that its decision was necessary to the determination of the case, and that it was actually decided, or that the judgment as rendered could not have been given without deciding it. DeSaussure v. Gaillard, 127 U.S. 216.
Now, while the trial court appears to have held the defendant liable upon the ground that it had agreed to use the plaintiff's device upon all of its machines, and also upon the ground that it had in fact used them, or their mechanical equivalent, it is very evident from an examination of the opinion of the
general term, which we are at liberty to consult, Philadelphia Fire Association v. New York, 119 U.S. 110, that neither the construction nor the validity of the plaintiff's patent was regarded as material. That court found the agreement on the part of the defendant to be that, in consideration of the right to the exclusive use of the plaintiff's device, it would use it upon all mowing and reaping machines, and would pay a reasonable value for such use. "By the terms of the agreement," said the court, "it was not incumbent upon the plaintiff to show that the defendant did actually use it upon such machines. It was sufficient for him to show the number manufactured during the existence of the agreement. Neither can the defendant evade liability by proving that it did not use it, because his agreement was, in effect, that he would pay a reasonable value for its use upon all mowing and reaping machines manufactured, and it cannot now be permitted to escape payment, as provided by the agreement, by proof that, without the knowledge of the plaintiff, it omitted to place the attachment upon machines manufactured by it. . . . The views thus expressed render it unnecessary to consider the question discussed by the referee, as to whether or not the defendant did use plaintiff's device upon its machines." Under this view, the only question of fact was the value of the use of the device, which the referee fixed at five cents, and his finding upon that point is conclusive.
The defence to the case was that the defendant did not make use of the plaintiff's spring plug, which had a scalloped head, but did make use of an oiler shown in Webster's Dictionary, which was practically the same, except that it did not have a scalloped head, its contention being that the scalloping of the head was immaterial and useless, and that the device so far as it was useful had been anticipated. But the referee found that, by accepting the license and agreeing to use the plaintiff's patented device, the defendant was estopped to deny the validity of the patent to the full extent of its claim, and if, as he found, the defendant made use of the device set forth in the claim of the partent, or its mechanical equivalent, it was liable, though in an action for infringement of such claim, it
might have been adjudged invalid. But, as before stated, the general term found it unnecessary to determine whether the defendant had actually made use of the device or its equivalent, and held it to be liable upon the ground that it had agreed to use it upon all its machines, and was, therefore, bound to pay its value as fixed by the referee.
It does not appear upon what ground the Court of Appeals proceeded in affirming this judgment, but as the case might properly have been determined upon a ground broad enough to support the judgment without resort to a federal question, this court has no jurisdiction. Beaupre v. Noyes, 138 U.S. 397; Johnson v. Risk, 137 U.S. 300.
The writ of error must, therefore, be dismissed for want of jurisdiction.
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