Under the Act of March 3, 1891, c. 517, § 7, an appeal to the
circuit court of appeals from an interlocutory order or decree of
the circuit court granting an injunction and ordering an account in
a patent case may be from the whole order or decree, and upon such
an appeal, the circuit court of appeals may consider and decide the
case on its merits, and thereupon render or direct a final decree
dismissing the bill.
In each of these cases, the Circuit Court of the United States
for the Northern District of California, upon a bill in equity for
the infringement of a patent for an invention, an answer denying
the validity and the infringement of the patent, a general
replication, and a hearing, entered an interlocutory decree
adjudging that the patent was valid, and had been infringed,
granting an injunction and referring the case to a master to take
an account of profits and damages. From that decree in each case
the defendant appealed to the Circuit Court of Appeals for the
Ninth Circuit.
In the first case, the defendant at the time of taking the
appeal filed in the circuit court an assignment of errors alleging
error in holding that the patent was valid, and that it had been
infringed. The plaintiff moved the circuit court of appeals to
dismiss the appeal so far as it involved any question except
whether an injunction should be awarded. But that court denied the
motion, and, upon a hearing, examined the questions of validity and
infringement, decided them in favor of the defendant, and entered a
decree reversing the decree of the circuit court. 62 F. 444. On
petition of the plaintiff, this Court, on January 28, 1895, granted
a writ of certiorari to the circuit court of appeals.
In the second case, the circuit court of appeals affirmed the
decree of the circuit court, 29 U.S.App. 409, but, upon
Page 165 U. S. 519
a rehearing, decided that there had been no infringement,
reversed its own decree and that of the circuit court, and remanded
the case with instructions to dismiss the bill, and afterwards
denied a petition for a rehearing and a motion to certify questions
of law to this Court. 70 F. 833. The circuit court, upon receiving
the mandate of the circuit court of appeals and without hearing the
plaintiffs, entered a final decree dismissing the bill. An appeal
from this decree was taken by the plaintiff to the circuit court of
appeals, and, upon the defendant's motion, and without any hearing
on the merits, was dismissed by that court. The plaintiff, on
November 9, 1896, presented to this Court a petition for a writ of
certiorari, and the court thereupon granted a rule to show cause
why the writ should not issue to bring up the decree of the circuit
court of appeals,
"so that it may be determined whether, upon an appeal from an
interlocutory decree granting a temporary injunction in a patent
case, the circuit court of appeals can render or direct a final
decree on the merits."
That question was now, by leave of the court, orally argued in
both cases, the parties in the first case stipulating in writing
that if the decision of this Court upon that question should be in
favor of the jurisdiction of the circuit court of appeals, the case
should be dismissed by the appellees.
MR. JUSTICE GRAY, after stating the case, delivered the opinion
of the Court.
The Act of March 3, 1891, c. 517, establishing circuit courts of
appeals, after providing in section 5, for appeals from the circuit
courts and district courts directly to this Court in
Page 165 U. S. 520
certain classes of cases, and in section 6 for appeals from
final decisions of those courts to the circuit court of appeals in
all other cases, including cases arising under the patent laws,
further provides in section 7 that
"where, upon a hearing in equity in a district court, or in an
existing circuit court, an injunction shall be granted or continued
by an interlocutory order or decree, in a cause in which an appeal
from a final decree may be taken under the provisions of this act
to the circuit court of appeals, an appeal may be taken from such
interlocutory order or decree granting or continuing such
injunction to the circuit court of appeals,
provided that
the appeal must be taken within thirty days from the entry of such
order or decree, and it shall take precedence in the appellate
court, and the proceedings in other respects in the court below
shall not be stayed, unless otherwise ordered by that court, during
the pendency of such appeal."
26 Stat. 828.
The questions presented by each of these cases are whether, in a
suit in equity for the infringement of a patent, an appeal to the
circuit court of appeals from an interlocutory order or decree of
the circuit court, granting an injunction, and referring the case
to a master to take an account of damages and profits may be from
the whole order or decree, or must be restricted to that part of it
which grants the injunction, and whether the circuit court of
appeals, upon such an appeal, may consider and decide the merits of
the case, and, if it decides them in the defendant's favor, may
order the bill to be dismissed.
Upon these questions there has been some diversity of opinion
among the circuit courts of appeals of the different circuits. But
those courts have now generally concurred in taking the broader
view of the appeal itself and of the power of the appellate
court.
In the earliest of such appeals, the cases were examined on the
merits and, upon a reversal of the order or decree appealed from,
the authority to direct the bill to be dismissed was assumed,
without question, in the Circuit Court of Appeals for the Fifth
Circuit:
Dudley E. Jones Co. v. Munger Co.
Page 165 U. S. 521
(Dec., 1891), 50 F. 785; for the First Circuit:
Richmond v.
Atwood (Feb., 1892), 48 F. 910, and for the Second Circuit:
American Pail Co. v. National Box Co. (July, 1892), 51 F.
229. The cases in the Fifth and First Circuits were afterwards
reconsidered upon petitions for rehearing. In the Fifth Circuit,
the decree was modified so as only to direct the injunction to be
dissolved.
Dudley E. Jones Co. v. Munger Co. (May, 1892),
50 F. 785. But in the First Circuit, the power of the circuit court
of appeals upon such an appeal to consider the merits of the case
and to order the bill to be dismissed was maintained, after
thorough discussion of the subject, on principle and authority, in
an opinion delivered by Judge Aldrich.
Richmond v. Atwood
(Sept., 1892), 52 F. 10.
This view has since prevailed, not only in the First Circuit:
Marden v. Campbell Press Co. (May, 1895), 67 F. 809;
Wright & Colton Co. v. Clinton Co. (May, 1895), 67 F.
790, but also in the Second Circuit:
Florida Construction Co.
v. Young (December, 1892), 59 F. 721;
Bidwell Cycle Co. v.
Featherstone (August, 1893), 57 F. 631;
Curtis v. Overman
Wheel Co. (December, 1893), 58 F. 784;
Westinghouse
Air-Brake Co. v. New York Air-Brake Co. (October, 1894), 63 F.
962;
Kilmer Manuf. Co. v. Griswold (April, 1895), 67 F.
1017, in the Third Circuit:
Union Switch Co. v. Johnson Signal
Co. (May, 1894), 61 F. 940;
Erie Rubber Co. v. American
Dunlop Tire Co. (July, 1895), 70 F. 58, in the Seventh
Circuit:
Temple Pump Co. v. Goss Pump Co. (October, 1893),
58 Fed.196;
Northwestern Stove Co. v. Beckwith (October,
1893), 58 F. 182;
Electric Manuf. Co. v. Edison Electric
Co. (May, 1894) 61 F. 834;
Card v. Colby (November,
1894), 64 F. 594;
Standard Elevator Co. v. Crane Elevator
Co. (October, 1896), 76 F. 767, in the Eighth Circuit:
Lockwood v. Wickes (June, 1896), 75 F. 118,
overruling
s.c. (December, 1895), 75 F. 118, and in the Ninth Circuit:
Consolidated Cable Co. v. Pacific Cable Co. (July, 1893),
58 F. 326;
Page 165 U. S. 522
Butte City Railway v. Pacific Cable Railway (February,
1894), 60 F. 410;
Vulcan Iron Works v. Smith (May, 1894),
62 F. 444;
Wheaton v. Norton (January, 1895), 70 F.
833.
In the Fourth Circuit, the question does not appear to have
arisen in a patent case. But where, upon a bill in equity to
restrain a supervisor of registration from interfering with the
right to vote at the election of delegates to a convention to
revise the Constitution of the State of South Carolina, the Circuit
Court of the United States for the District of South Carolina had,
by successive orders, granted and continued a temporary injunction,
the circuit court of appeals, upon appeal from these orders,
entered a decree, not only reversing the orders, but directing the
bill to be dismissed, the Chief Justice saying,
"Although the appeal is from interlocutory orders, yet, as we
entertain no doubt that such a bill cannot be maintained, we are
constrained, in reversing these orders, to remand the cause with a
direction to dismiss the bill."
Green v. Mills (1895) 69 F. 852. An appeal from that
decree was dismissed by this Court without touching this question.
159 U. S. 651.
In the Sixth Circuit, on the other hand, in a case in which the
circuit court had entered an interlocutory decree sustaining the
validity of the patent, adjudging that there was an infringement,
ordering an account of damages and profits, and granting an
injunction, and had allowed an appeal from so much only of that
decree as granted the injunction, and denied an appeal from the
rest of the decree, the circuit court of appeals, in an opinion
delivered by Mr. Justice Jackson (then circuit judge) with the
concurrence of Judge Taft and Judge Hammond, held that the appeal
had been properly restricted by the circuit court, and that the
circuit court of appeals had no authority, upon this appeal, to
hear and fully determine the merits of the case, but that those
remained, notwithstanding the appeal, within the jurisdiction and
control of the circuit court. That decision was made before the
second decision in
Richmond v. Atwood, above cited,
Page 165 U. S. 523
had been reported, and without reference to the practice of
courts of chancery elsewhere. And it was said in the opinion:
"It would doubtless have been well if, in the creation of this
Court, the seventh section of the act had permitted or authorized
an appeal from interlocutory decrees sustaining the validity of
patents and adjudging their infringement, so as to obviate in many
cases the taking of expensive accounts, and the delays incident
thereto."
Columbus Watch Co. v. Robbins (Oct., 1892), 52 F. 337.
A certificate thereupon made by the circuit court of appeals, for
the purpose of obtaining the instructions of this Court, was
dismissed by this Court, with Mr. Justice Jackson's concurrence,
because no question of law was distinctly certified and because the
circuit court of appeals had decided the case before granting the
certificate.
148 U. S. 148 U.S.
266.
That decision was long treated as settling the practice in that
circuit on appeals from such interlocutory decrees, and as
permitting the questions of validity and infringement to be
considered only so far as they affected the granting or refusal of
an injunction.
Blount v. Societe Anonyme (November, 1892),
53 F. 98;
Columbus Watch Co. v. Robbins, (October, 1894),
64 F. 384;
Duplex Press Co. v. Campbell Press Co. (July,
1895), 69 F. 250;
Thompson v. Nelson (November, 1895), 71
F. 339;
Goshen Co. v. Bissell Co. (December, 1895, and
February, 1896), 72 F. 67.
But at last, the circuit court of appeals of the Sixth Circuit,
in an able and elaborate opinion delivered by Judge Lurton, with
the concurrence of Judge Taft and Judge Hammond, being a majority
of the court which had made the decision in
Columbus Watch Co.
v. Robbins, 52 F. 337, above cited, expressly overruled that
decision, and brought the practice in that circuit into harmony
with the practice prevailing in other circuits.
Bissell Co. v.
Goshen Co. (March, 1896), 73 F. 545;
Dueber Co. v.
Robbins (May, 1896), 75 F. 17.
By the practice in equity, as administered in the Court of
Chancery and the House of Lords in England and in the
Page 165 U. S. 524
courts of chancery and courts of errors in the states of New
York and New Jersey, appeals lay from interlocutory, as well as
from final orders or decrees, and upon an appeal from an
interlocutory order or decree, the appellate court had the power of
examining the merits of the case and, upon deciding them in favor
of the defendant, of dismissing the bill, and thus saving to both
parties the needless expense of a further prosecution of the suit.
Palmer, H.L.Prac. 1; 2 Dan.Ch.Pract. (1st ed.) 1491, 1492;
Forgay v.
Conrad, 6 How. 201,
47 U. S. 205;
Le Guen v. Gouverneur, 1 Johns.Cas. 436, 498-499, 507-509;
Bush v. Livingston, 2 Caines Cas. 66, 86;
Newark &
New York Railroad v. Newark, 23 N.J.Eq. 515.
But under the judicial system of the United States, from the
beginning until the passage of the act of 1891, establishing
circuit courts of appeals, appeals from the circuit courts of the
United States in equity or in admiralty, like writs of error at
common law, would lie only after final judgment or decree, and an
order or decree in a patent cause, whether upon preliminary
application or upon final hearing, granting an injunction, and
referring the cause to a master for an account of profits and
damages, was interlocutory only, and not final, and therefore not
reviewable on appeal before the final decree in the cause. Acts
Sept. 24, 1789, c. 20, §§ 13, 22, 1 Stat. 81, 84; March 3, 1803, c.
40, 2 Stat. 244; Rev.Stat. §§ 691, 692, 699, 701;
Forgay v.
Conrad, above cited;
Barnard v.
Gibson, 7 How. 650;
Humiston
v. Stainthorp, 2 Wall. 106;
Keystone Iron Co.
v. Martin, 132 U. S. 91;
McGourkey v. Toledo & Ohio Railway, 146 U.
S. 536,
146 U. S. 545;
American Construction Co. v. Jacksonville &c. Railway,
148 U. S. 372,
148 U. S.
378-379.
The provision of section 7 of the act of 1891 that where, "upon
a hearing in equity" in a circuit court, "an injunction shall be
granted or continued by an interlocutory order or decree" in a
cause in which an appeal from a final decree might be taken to the
circuit court of appeals, "an appeal may be taken from such
interlocutory order or decree granting or continuing such
injunction" to that court, authorizes
Page 165 U. S. 525
according to its grammatical construction and natural meaning,
an appeal to be taken from the whole of such interlocutory order or
decree, and not from that part of it only which grants or continues
an injunction.
The manifest intent of this provision, read in the light of the
previous practice in the courts of the United States, contrasted
with the practice in courts of equity of the highest authority
elsewhere, appears to this Court to have been not only to permit
the defendant to obtain immediate relief from an injunction the
continuance of which throughout the progress of the cause might
seriously affect his interests, but also to save both parties from
the expense of further litigation should the appellate court be of
opinion that the plaintiff was not entitled to an injunction
because his bill had no equity to support it.
The power of the appellate court over the cause, of which it has
acquired jurisdiction by the appeal from the interlocutory decree,
is not affected by the authority of the court appealed from,
recognized in the last clause of the section, and often exercised
by other courts of chancery, to take further proceedings in the
cause unless in its discretion it orders them to be stayed pending
the appeal.
Hovey v. McDonald, 109 U.
S. 150,
109 U. S.
160-161;
In re Haberman Co., 147 U.
S. 525;
Messonnier v. Kauman, 3 Johns.Ch.
66.
In each of the cases now before the Court, therefore, the
circuit court of appeals, upon appeal from the interlocutory decree
of the circuit court granting an injunction and ordering an
account, had authority to consider and decide the case upon its
merits, and thereupon to render or direct a final decree dismissing
the bill.
In the second case, it was argued in support of the petition for
a writ of certiorari that the circuit court, upon receiving the
mandate of the circuit court of appeals directing a dismissal of
the bill, erred in entering a final decree accordingly, without
further hearing, and that the circuit court of appeals erred in
dismissing an appeal from that decree. But the rule to show cause
did not proceed upon that ground. And the merits of the case,
having been once determined by
Page 165 U. S. 526
the appellate court in reversing the interlocutory decree, were
not open to reconsideration at a later stage of the same case,
either in that court or in the court below.
Sanford Fork &
Tool Co., Petitioner, 160 U. S. 247, and
cases there cited;
Great Western. Tel. Co. v. Burnham,
162 U. S. 339. Had
the case been heard anew in each court after the first mandate, the
only difference in the result would have been an affirmance,
instead of a dismissal, upon the second appeal. That difference,
not affecting the essential rights of the parties, is no ground
upon which this Court should exercise its discretionary power of
issuing a writ of certiorari.
It follows that, in the first case, in accordance with the
stipulation of the parties, the writ of certiorari heretofore
granted is dismissed, and in the second case, the writ of
certiorari is denied.
Judgments accordingly.