Mr. Thomas J. Johnston, with whom Messrs. J. Granville Meyers and John Milton were on the brief, for appellant. Counsel for appellant cited: White v. Rankin, 144 U.S. 628; Healy v. Sea Gull Mfg. Co., 237 U.S. 479; Wilson v. Sanford, 10 How. 99; Hartell v. Tilghman, 99 U.S. 547; Albright v. Teas, 106 U.S. 613; Dale v. Hyatt, 125 U.S. 46; Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U.S. 282; Littlefield v. Perry, 21 Wall. 205; Atherton Co. v. Atwood, 102 F. 949; The Fair v. Kohler, 228 U.S. 22; Healy v. Sea-Gull Specialty Co., 237 U.S. 479; Geneva Furniture Co. v. Karpen, 238 U.S. 254; Briggs v. United Mch. Co., 239 U.S. 48. From these cases they deduced the following propositions: I. Where the suit is based only on a contract concerning patent (or other) rights, whether to enforce the contract, to modify it, to cancel it, or to recover damages for its breach, the suit is not one "touching patent rights," under § 256, par. 5, Judicial Code, and jurisdiction must be maintained, if at all, by reason of diverse citizenship, or otherwise, under § 24; subject to the usual restrictions as to residence, etc., of the concurrent jurisdiction found in § 51. That patent rights may or must be incidentally considered does not affect the principle.

The Trade Mark Act fully provides for every case, both when the Commissioner wrongfully refuses to register a trade-mark and when he erroneously grants registration. No trade-mark registration has ever been canceled under § 4915, Rev. Stats.; no patent has ever been canceled under § 4915, Rev. Stats.Except in the case of interfering patents, it is settled law that patents for inventions may be canceled only by the United States, and only under the general principles of equity, and this right is solely within the power of the United States. It has been settled that § 4915, Rev. Stats., does not authorize an action to cancel a patent, even by the United States. Mowry v. Whitney, 14 Wall. 434; United States v. American Bell Tel.Co., 128 U.S. 315; Same v. Same, 159 U.S. 548; Briggs v. United Shoe Machinery Co., 239 U.S. 48.To interpret § 4915 as authorizing the action at bar, which is to enjoin the cancellation of a trade-mark registration, requires a rewriting of § 4915, and the incorporation into the section of both words and subject matter entirely foreign to its present plain language. Such an interpretation "is not to be attained by striking out or disregarding words that are in the section, but by inserting those that are not there now. This is no part of our duty.

So it is well to recall at the outset that "the general powers of Federal courts when sitting as courts of equity * * * can be exerted only in cases otherwise within the jurisdiction of those courts as defined by Congress". Briggs v. United Shoe Mach. Co., 1915, 239 U.S. 48, 50, 36 S.Ct. 6, 7, 60 L.Ed. 138. Since complete diversity of citizenship and the requisite amount in controversy are here present this case is clearly one "otherwise within the jurisdiction of [this court] * * * as defined by Congress."

Once granted general jurisdiction over a subject matter, the District Courts are empowered in proper cases to exercise their equity jurisdiction as well. That is to say, in the language of Briggs v. United Shoe Mach. Co., 1915, 239 U.S. 48, 36 S.Ct. 6, 60 L.Ed. 138, "the * * * powers of Federal courts when sitting as courts of equity * * * can be exerted only in cases otherwise within the jurisdiction of those courts as defined by Congress." 239 U.S. at page 50, 36 S.Ct. at page 7; see Twist v. Prairie Oil Co., 1927, 274 U.S. 684, 689-692, 47 S.Ct. 755, 71 L.Ed. 1297.

Rice and Adams Corp. v. Lathrop, 1929, 278 U.S. 509, 515, 49 S.Ct. 220, 73 L.Ed. 480; Briggs v. United Shoe etc. Co., 1915, 239 U.S. 48, 50, 36 S.Ct. 6, 60 L.Ed. 138; Beaunit Mills v. Eday Fabric Sales Corp., 2 Cir., 1942, 124 F.2d 563, 566.

It has been often decided by this court that such a suit is not one arising under the patent laws, and since less than the requisite jurisdictional amount is claimed the District Court did not err in dismissing the bill. Wilson v. Sanford, 10 How. 99; Dale Tile Mfg. Co. v. Hyatt, 125 U.S. 46; Albright v. Teas, 106 U.S. 613; Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U.S. 282; Briggs v. United Shoe Machinery Co., 239 U.S. 48. The decree of the District Court must be

The seminal case cited by the Court holding that the case did not arise under the patent laws was Wilson v. Sandford, 51 U.S. (10 How.) 99, 13 L.Ed. 344 (1850). Subsequent cases cited by the Court, where the cause of action was found not to arise under the patent laws, included: Briggs v. United Shoe Mach. Co., 239 U.S. 48, 36 S.Ct. 6, 60 L.Ed. 138 (1915); Marsh v. Nichols, Shepard Co., 140 U.S. 344, 11 S.Ct. 798, 35 L.Ed. 413 (1891); Dale Tile Mfg. Co. v. Hyatt, 125 U.S. 46, 8 S.Ct. 756, 31 L.Ed. 683 (1888); Albright v. Teas, 106 U.S. 613, 1 S.Ct. 550, 27 L.Ed. 295 (1882); Hartell v. Tilghman, 99 U.S. 547, 25 L.Ed. 357 (1879); and Brown v. Shannon, 61 U.S. (20 How.) 55, 15 L.Ed. 826 (1857). Cases cited by the Court which held that a cause of action does arise under the patent laws included: Geneva Furniture Mfg. Co. v. S. Karpen Bros., 238 U.S. 254, 35 S.Ct. 788, 59 L.Ed. 295 (1915); Healy v. Sea Gull Specialty Co., 237 U.S. 479, 35 S.Ct. 658, 59 L.Ed. 1056 (1915); The Fair v. Kohler Die Specialty Co., 228 U.S. 22, 33 S.Ct. 410, 57 L.Ed. 716 (1913); Henry v. A.B. Dick Co., 224 U.S. 1, 32 S.Ct. 364, 56 L.Ed. 645 (1912); Excelsior Wooden Pipe Co. v. Pacific Bridge Co., 185 U.S. 282, 22 S.Ct. 681, 46 L.Ed. 910 (1902); and White v. Rankin, 144 U.S. 628, 12 S.Ct. 768, 36 L.Ed. 569 (1892).

Mowry v. Whitney, 81 U.S. 434, 14 Wall. 434, 20 L.Ed. 858 (1871). The right of the government to bring an action to annul a patent was firmly established in United States v. Bell Tel. Co., 128 U.S. 315, 9 S.Ct. 90, 32 L.Ed. 450 (1888), and the right was deemed exclusive United States v. American Bell Tel. Co., 159 U.S. 548, 555, 16 S.Ct. 69, 40 L.Ed. 255 (1895); Briggs v. United Shoe Machinery, 239 U.S. 48, 50, 36 S.Ct. 6, 60 L.Ed. 138 (1915); Carson Inv. Co. v. Ananconda Copper Mining Co., 26 F.2d 651, 660 (9th Cir. 1928). Since 1915, however, our research discloses no Supreme Court case holding that the right to seek patent nullification has been expressly limited to the United States. Of course, a patentee guilty of obtaining a patent by fraudulent conduct could be denied equitable relief when bringing an infringement action, thus rendering the patent unenforceable against a defendant who could prove unclean hands.

Only the government can do that. (Eckert v. Braun, 155 F.2d 517, 519, C.A.7; United States v. American Bell Tel. Co., 128 U.S. 315, 9 S.Ct. 90, 32 L.Ed. 450; United States v. American Bell Tel. Co., 159 U.S. 548, 16 S.Ct. 69, 40 L.Ed. 255; Briggs v. United Shoe Machinery Co., 239 U.S. 48, 36 S.Ct. 6, 60 L.Ed. 138.) The patent having been issued to plaintiff's assignors is presumed to be valid.

This is enough. The following cases and authority are helpful on this point: Victor Talking Machine Co. v. Brunswick-Balke-Collender Co., D.C.Del., 1923, 290 F. 565, 570; Briggs v. United Shoe Mach. Co., 1915, 239 U.S. 48, 36 S.Ct. 6, 60 L.Ed. 138; Keystone Trading Co. v. Zapota Mfg. Co., D.C.E.D. Pa., 1914, 210 F. 456; Palmer Pneumatic Tire Co. v. Lozier, C.C.N.D.Ohio, 1895, 69 F. 346; 3 Walker, Patents, § 512 (Deller ed., 1937). But see General Chemical Co. v. Aluminum Co., D.C.W.D. Pa., 1924, 11 F.2d 810, 813.