Irvin attacks the jurisdiction of the New York courts to entertain this action. It contends that the suit, however disguised, is really one for patent infringement and, as such, is within the exclusive jurisdiction of the Federal courts. More particularly, Irvin claims that the plaintiff sued in tort in the State court in order ‘to avoid the necessity’ of meeting the defense of patent invalidity–under Sears, Roebuck & Co. which, it asserts, may only be raised in the Federal courts.
This argument misconceives the law, since neither the plaintiff’s agreement nor the purported existence of a defense based on the patent’s invalidity affects the court’s jurisdiction. It is firmly settled that the Federal courts have exclusive jurisdiction, and the State courts are ousted of jurisdiction, Only if the action brought ‘arises under’ the Federal patent laws. Thus, actions involving contracts relating to patents–or copyrights 2–are not considered suits arising under those laws, and are properly brought in the State court, even if the validity of the patent may somehow be involved and the plaintiff could have brought suit for its infringement in the Federal court. In other words, the fact that the foundation for suit is a contract granting patent rights and that the plaintiff must rely on the patent in support of his cause of action is not determinative and neither vests the Federal court with jurisdiction nor deprives the State court of power to entertain the action as in T.B. Harms Co. v. Eliscu.
The rule is well exemplified by the decision in the American Well Works case, which concerned a claim of unfair competition based upon alleged false charges of patent infringement. In holding that the action was properly brought in the State court, despite the fact that the validity of the patent may have been ‘involved’ in a defense of justification, the court applied the law and rendered a decision in the case.
