Opinion of the Court.

plaintiff the reasonable value of the patented device, and also found that if the claim for the patent was for nothing more than a scalloped conical head, in combination with other elements, the same was worthless, and that plaintiff ought not to recover; and that said courts erred in holding that, because the claim was substantially for a conical head, whether said head was or was not scalloped, defendant was liable for more than nominal damages. Third. That the state courts also erred in their conclusion that defendant had actually used plaintiff's invention, it being found by the referee that defendant had not used such device, unless the claim of the patent was for a conical-headed spring plug, with or without scallops. Fourth. That such holdings were an erroneous construction of the letters patent, and necessarily involved the legal effect of the patent laws of the United States.

A motion was thereupon made by the defendant in error to dismiss for want of jurisdiction, coupled with a motion to affirm.

Mr. James Lansing for the motion.

Mr. Ezek Cowen opposing.

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. De Saussure 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

Opinion of the Court.

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 patent, or its mechanical equivalent, it was liable, though in an action for infringement of such claim, it

Syllabus.

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. Beaupré 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.

MUTUAL RESERVE FUND LIFE ASSOCIATION v. HAMLIN.

ERROR TO THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF CONNECTICUT.

No. 184. Argued March 2, 3, 1891.- Decided March 23, 1891.

The plaintiff in error was an association formed "to furnish substantial aid to their families or assigns in the event of a member's death." The husband of the defendant in error became a member, and received a certificate stating that in consideration, among other things, "of the payment of all dues and of all mortuary assessments" his wife should be entitled to receive $10,000 from the death fund of the association. The constitution and by-laws of the association provided that a mortuary assessment should be made on the first days of February, May, August and November, but did not fix any rate; that it should be the duty of a member failing to receive notice of an assessment on or before those days, to notify the home office thereof; and that a failure to pay the assessment within thirty days from said first days should work a forfeiture of membership. When the husband died he had failed for more than thirty days to pay an assessment which had been made, and had not informed the association that he had failed to receive notice of it. To an action brought by the beneficiary to recover the amount insured the association set up these failures in defence. Held,

Opinion of the Court.

(1) That the association was not required to make assessments except when made necessary in order to meet existing claims;

(2) That the insured was entitled to notice of each assessment;

(3) That the failure of the assured to inform the association of a failure to receive notice of an assessment did not work a forfeiture of membership and of previous payments;

(4) That, as there was conflicting evidence upon the issue of fact whether notice of the assessment was mailed by the association to the assured, it was properly left to the determination of the jury.

THE case is stated in the opinion.

Mr. Alfred Taylor, with whom was Mr. Frederick S. Parker on the brief, for plaintiff in error.

Mr. Charles E. Perkins, with whom was Mr. Solomon Lucas on the brief, for defendant in error.

MR. JUSTICE HARLAN delivered the opinion of the court.

This action is based upon a certificate of life insurance. There was a verdict and judgment in favor of the plaintiff, the beneficiary in the contract of insurance. The refusal of the court to direct a verdict for the defendant and its rulings upon questions of law occurring at the trial constitute the general grounds upon which a reversal of the judgment is sought.

The Mutual Reserve Fund Life Association, the defendant below, was organized under the laws of New York "to promote the well-being of its members and to furnish substantial aid to their families or assigns in the event of a member's death." Its constitution and by-laws, in force January 11, 1883, provided that within ninety days after receiving satisfactory notice and proof of the death of a member, the association should pay to the beneficiary named on its books, or to his or her assigns or legal representatives, the amount due according to the terms of the certificate of membership; and that seventy-five per cent of all net death assessments received by the association should go into the "death fund," the balance, together with the net earnings of the association, constituting the "reserve fund," no part of which could be used

Opinion of the Court.

for expenses. They also provided: "On the first days of February, May, August and November (or at such other periods as the board of directors may determine) an assessment shall be made upon the entire membership in force at the date of the last audited death claim prior thereto for such a sum as the executive committee may deem sufficient to meet the existing claims by death, the same to be apportioned among the members, according to the age of each member, as per the rates named in the certificate of membership, and the net amount received from such assessments (less twenty-five per cent to be set apart for the reserve fund) shall go into the death fund. A member failing to receive a notice of an assessment on or before the first days of February, May, August and November, for his share of the losses occurring during the time specified, it shall be his duty to notify the home office in writing of such fact. A failure to pay the assessment within thirty days from the first days of February, May, August and November, (or at such periods as may be named by the directors,) shall work a forfeiture of membership in this association with all rights thereunder. The provisions of this amendment shall take effect on and after August 1, 1883." Further: "If any member shall neglect to pay any dues or assessments when due, or if any of the conditions are violated upon which the certificate of membership is issued, then and in every such case such membership shall at once cease and determine and all payments made thereon shall be forfeited to the association, but the executive committee shall have the power to reinstate such delinquent member at any time within one year for good cause shown and upon satisfactory evidence of good health and upon payment of all delinquent dues and assessments."

The certificate of insurance here in suit was executed July 26, 1883. It contains, among others, the following provisions: "In consideration of the statements, representations and warranties contained in the application for this certificate of membership, and of the admission fee paid, and of the dues to be paid for expenses on or before the thirtieth day of June in every year during the continuance of this certificate, and of