Plaintiffs brought suit upon a single patent, in which there
were twelve claims. The Circuit Court found that three of the
claims were invalid and nine valid, of which five had been
infringed, and referred it to a master to report the amount of
damages and dismissed the bill as to the claims found invalid and
not infringed. Defendants appealed from the decree and plaintiffs
also filed cross-appeal assigning as errors the rulings adverse to
them. The circuit court of appeals dismissed the cross-appeal.
Petition for mandamus to compel that court to take jurisdiction of
the cross-appeal denied and
held that:
The decree was interlocutory, and not final, and in the federal
courts, no appeal can as a general rule be taken except from a
final decree.
The appeal authorized by § 7 of the Act of March 3, 1891, does
not bring up the cause as a whole; and, unless otherwise specially
ordered, the case, except for hearing of the appeal from the
interlocutory order, proceeds in the lower court as though no
appeal had been taken until final judgment.
Cases in which a bill has been dismissed as to some of the
defendants and a separable controversy as to others referred to a
master for an accounting, and in which the dismissal has been
treated as a final decree, have no application to a case of joint
liability, or in which there is only a single defendant.
In March, 1903, the petitioners filed their bill in the
Circuit
Page 201 U. S. 157
Court of the United States for the Southern District of New York
against the New England Enameling Company to restrain the further
infringement by that company of letters patent of the United
States, No. 527,361, for improvements in enameling metal ware, and
to recover damages for past infringement. After answer and proofs,
the case came on for hearing, and on July 8, 1905, a decree was
entered, reciting that nine of the twelve claims in the patent were
good and valid, that three were invalid and void by reason of the
fact that the patentee was not the original or first inventor or
discoverer, that five of the nine valid claims had been infringed
by the defendant, but the remaining four had not been. As to the
claims held invalid and those found to have been not infringed, it
was ordered that the bill of complaint be dismissed. As to the
remaining five claims -- those held to be infringed -- it was
ordered that the plaintiffs recover the gains, profits, savings,
and advantages which the defendant had derived by reason of the
infringement, and that the case be referred to a master to report
the amount thereof, and also that an injunction issue against
further infringement. On August 1, 1905, the defendant appealed
from said decree to the court of appeals and filed its assignment
of errors. On August 8, the plaintiffs also appealed to the circuit
court of appeals and assigned as errors the rulings in the decree
adverse to them. On January 3, 1906, this cross-appeal of the
plaintiffs was dismissed by the court of appeals on the ground that
it had no jurisdiction thereof. Thereupon the plaintiffs filed in
this Court this petition for a writ of mandamus commanding the
judges of the circuit court of appeals to take jurisdiction of said
cross-appeal and to dispose of it simultaneously with the appeal of
the defendant.
Page 201 U. S. 160
MR. JUSTICE BREWER delivered the opinion of the Court.
The decree entered by the circuit court was interlocutory, and
not final.
Barnard v.
Gibson, 7 How. 650;
Humiston
v. Stainthorp, 2 Wall. 106, and cases cited in
note;
Estey v. Burdett, 109 U. S. 633,
109 U. S. 637;
McGourkey v. Toledo & Ohio Railway Company,
146 U. S. 536 (in
this case is a full discussion of the differences between an
interlocutory and a final decree);
Hohorst v. Hamburg-American
Packet Company, 148 U. S. 262;
Smith v. Vulcan Iron Works, 165 U.
S. 518.
Plaintiffs brought one suit upon a single patent. The findings
of the circuit court that three of the twelve claims were invalid
and that the remaining nine were valid, but that four of them had
not been infringed by the defendant, did not break this one suit
into twelve. They were a guide to the master in his ascertainment
of the damages, and indicated the scope of the final decree.
In the federal courts, no appeal can, as a general rule, be
taken, except from a final decree. As said by Mr. Chief Justice
Taney in
Forgay v.
Conrad, 6 How. 201,
47 U. S.
205:
"In this respect, the practice of the United States chancery
courts differs from the English practice. For appeals to the House
of Lords may be taken from an interlocutory order of
Page 201 U. S. 161
the Chancellor, which decides a right of property in dispute. .
. . But the case is otherwise in the courts of the United States,
where the right to appeal is by law limited to final decrees."
See also McLish v. Roff, 141 U.
S. 661,
141 U. S.
665.
In the latter case this was held persuasive against extending
the right of review given by § 5 of the Circuit Court of Appeals
Act of March 3, 1891, 26 Stat. 826, to other cases than those in
which there was a final judgment or decree, although the word
"final" is omitted in some of the clauses of the section.
By section 7 of that act, however, an appeal was provided from
certain interlocutory orders or decrees. That section has been
twice amended. 28 Stat. 666, c. 96; 31 Stat. 660. As it now stands,
it reads:
"SEC. 7. That where, upon a hearing in equity in a district
court or in a circuit court, or by a judge thereof in vacation, an
injunction shall be granted or continued or a receiver appointed,
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 or appointing such receiver 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, or by the appellate court or a
judge thereof, during the pendency of such appeal:
Provided,
further, That the court below may, in its discretion, require,
as a condition of the appeal, an additional bond."
It will be noticed that the appeal is allowed from an
interlocutory order or decree granting or continuing an injunction,
that it must be taken within thirty days, that it is given
precedence in the appellate court, that the other proceedings in
the lower court are not to be stayed, and that the lower
Page 201 U. S. 162
court may require an additional bond. Obviously that which is
contemplated is a review of the interlocutory order, and of that
only. It was not intended that the cause as a whole should be
transferred to the appellate court prior to the final decree. The
case, except for the hearing on the appeal from the interlocutory
order, is to proceed in the lower court as though no such appeal
had been taken, unless otherwise specially ordered. It may be true,
as alleged by petitioners, that
"it is of the utmost importance to all of the parties in said
cause that there shall be the speediest possible adjudication by
the United States circuit court of appeals as to the validity of
all of the claims of the aforesaid letters patent which are the
subject matter thereof."
But it was not intended by this section to give to patent or
other cases in which interlocutory decrees or orders were made any
precedence. It is generally true that it is of importance to
litigants that their cases be disposed of promptly, but other cases
have the same right to early hearing. And the purpose of Congress
in this legislation was that there be an immediate review of the
interlocutory proceedings, and not an advancement generally over
other litigation.
Petitioners rely mainly on
Smith v. Vulcan Iron Works,
165 U. S. 518. In
that case, it was held that, when an appeal is taken from an
interlocutory order granting or continuing an injunction, the whole
of the order is taken up, and the appellate court may (if, upon an
examination of the record, as thus presented, it is satisfied that
the bill is entirely destitute of equity) direct a dismissal, and
is not limited to a mere reversal of the order granting or
continuing the injunction. Take an ordinary patent case. If an
injunction is granted by an interlocutory order and the order is
taken on appeal to the circuit court of appeals, and that court is
of opinion that the patent is, on its face, absolutely void, it
would be a waste of time and an unnecessary continuance of
litigation to simply enter an order setting aside the injunction
and remanding the case for further proceedings. The direct and
obvious way is to order
Page 201 U. S. 163
a dismissal of the case, and thus end the litigation. And such
is the scope of the opinion in that case. After noticing the
general rule that appeals will not lie until after final decree,
and that an order or decree in a patent case granting an injunction
and sending the cause to a master for accounting is interlocutory
only, and therefore not reviewable on appeal before the final
decree in the case, it referred to the provision of section 7, and
said (p.
165 U. S.
525):
"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."
But nowhere in the opinion is it intimated that the plaintiff
was entitled to take any cross-appeal or to obtain a final decree
in the appellate court. This view of the scope of section 7 was
reaffirmed in
Mast, Foos & Co. v. Stover Manufacturing
Company, 177 U. S. 485,
177 U. S.
494-495.
It is suggested that, as to the claims held to be invalid and
those held to be valid but not infringed, the bill was dismissed;
that thus, in fact a final decree was entered which entitled the
plaintiff to an appeal.
Forgay v. Conrad, supra, and
Hill v. Chicago & Evanston Railroad Company,
140 U. S. 52, are
cited as authorities. In both these cases, there were several
defendants and the decrees were adjudged final only in respect to
certain of the defendants. In the first, the circuit court passed a
decree declaring sundry deeds to be fraudulent and void and
directing the lands and slaves therein mentioned to be delivered up
to the complainant, and also directing one of the defendants named
in the decree to pay him $11,000, and
"that the complainant
Page 201 U. S. 164
do have execution for the several matters aforesaid, in
conformity with law and the practice prescribed by the rules of the
Supreme Court of the United States."
The court refused to dismiss the appeal, holding that, while the
decree was not final in the strict technical sense of the term,
yet, in view of the effect of the orders entered and the fact that,
unless review was granted at once, there might be irreparable
injury, the decree must be regarded as final to that extent. At the
same time, it criticised the terms of the decree, said that the
final orders should have been delayed until the master's report was
received, and added, after its comments upon the procedure below (6
How.
47 U. S. 206):
"These remarks are not made for the purpose of censuring the
learned judge by whom this decree was pronounced, but in order to
call the attention of the circuit courts to an inconvenient
practice into which some of them have sometimes fallen, and which
is regarded by this Court as altogether inconsistent with the
objects and policy of the acts of Congress in relation to appeals,
and at the same time needlessly burdensome and expensive to the
parties concerned, and calculated, by successive appeals, to
produce great and unreasonable delays in suits in chancery. For it
may well happen that, when the accounts are taken and reported by
the master, this case may again come here upon exceptions to his
report, allowed or disallowed by the circuit court, and thus two
appeals made necessary, when the matters in dispute could more
conveniently and speedily and with less expense have been decided
in one."
In the subsequent case of
Beebe v.
Russell, 19 How. 283, in which the rule in
reference to the finality of decrees was further considered, it was
said, in explanation of the decision in the
Forgay case
(p.
60 U. S.
287):
"In
Forgay's case, it [the question] was made upon the
decree given by the court below, and it was adjudged by this Court
to be final to give this Court jurisdiction of it. But it was so,
upon the ground that the whole merits of the controversy between
the parties had been determined,
that execution
Page 201 U. S. 165
had been awarded, and that the case had been referred
to the master merely for the purpose of adjusting the accounts. The
fact is,
the order of the court in that case for referring it
to a master was peculiar, making it doubtful if it could in
any way control or qualify the antecedent decree of the court upon
the whole merits of the controversy, or modify it in any way
except upon a petition for a rehearing."
In
Hill v. Chicago & Evanston Railroad Company,
supra, there had been an order of dismissal in favor of some
of defendants, together with a reference to a master of a separable
controversy between the plaintiff and other parties, and the Court
observed (p.
140 U. S.
54):
"But there was no adjudication as to the payment of the amount
to be ascertained by the master; that remained unsettled. It was,
however, a severable matter from the other subjects of controversy,
and did not affect their determination. The fact that it was not
disposed of did not change the finality of the decree as to the
defendants against whom the bill was dismissed; that amount, or to
whom made payable, did not concern them. They were no longer
parties to the suit for any purpose. The appeal from the subsequent
decree did not reinstate them. All the merits of the controversy
pending between them and the complainant were disposed of, and
could not be again reopened except on appeal from that decree. As
to the other parties, it remained to ascertain the amount of one
item and to determine as to its payment."
But, as held in
Hohorst v. Hamburg-American Packet Company,
supra, that rule does not apply to cases where the liability
of the defendants is alleged to be joint, and therefore cannot to a
case in which there is but a single defendant.
The rule is discharged, and the application for a writ of
mandamus is denied.