1. When a patent for an invention has been sustained by the
circuit court of appeals and the case has been remanded to the
district court for an accounting, a party claiming that a
subsequent decree in another circuit should be given effect as
against the patent should apply by petition
to the circuit court of appeals for leave to file a bill in the
district court in the nature of a bill of review, setting up the
new matter as a bar to further proceedings. P. 254 U. S.
2. Such applications are addressed to the sound discretion of
the appellate tribunal, and should be decided upon consideration of
the materiality of the new matter and diligence in its
presentation. P. 254 U. S.
3. Leave to file such a bill of review may be granted after the
judgment of the appellate tribunal and after the going down of its
mandate at the close of the term at which judgment was rendered. P.
254 U. S.
that an application made to the circuit court
of appeals in this case was an application of that character, and
not an application to have the other decree pronounced res
by that court. P. 254 U. S.
5. The decision of the circuit court of appeals rejecting such
Page 254 U. S. 426
application is reviewable in this Court by certiorari, not by
appeal, since the application is ancillary to the original
jurisdiction over the case as one arising under the patent laws. P.
254 U. S.
268 F. 880 reversed.
The case is stated in the opinion.
MR. JUSTICE DAY delivered the opinion of the Court.
Suit was brought by Christensen and the Allis-Chalmers Company
in the District Court of the United States for
Page 254 U. S. 427
the Eastern District of Wisconsin against the National Brake
& Electric Company for infringement of patent to Christensen
No. 635,280 for improvement in a combined pump and motor. After
answer, the petition was amended so as to set up that Christensen,
before the issue of the patent No. 635,280, had obtained a patent
for the same invention under No. 621,324, and that, because of
defects, the same had been returned to the Commissioner of patents,
and the new letters issued for the same invention, and that the
Commissioner of Patents cancelled letters patent No. 621,324 and
issued letters patent No. 635,280 for the full term of 17 years
from October 17, 1899.
In the amended bill, it was prayed that the patent monopoly to
Christensen be adjudged to be valid for 17 years from March 21,
1899, the date of the first patent, and the second letters patent
be held by the court to be evidence of the grant for the term of 17
years from that date. Answer was filed, testimony taken, and a
decree was rendered in favor of Christensen, the district court
holding that whether the patent monopoly were evidenced by one or
the other or both of the two letters patent was immaterial. Appeal
was taken to the Circuit Court of Appeals for the Seventh Circuit,
where the decree of the district court was affirmed (229 F. 564),
and mandate was duly issued to the district court. After a petition
for rehearing was denied, an application was made to this Court for
a writ of certiorari, which was denied February 21, 1916. 241 U.S.
659. On the remand to the district court, a master was appointed
and an accounting begun.
On March 11, 1916, Christensen and the Allis-Chalmers Company
filed a bill of complaint against the Westinghouse Traction Brake
Company in the District Court of the United States for the Western
District of Pennsylvania. Issues were made up, and evidence was
We do not deem it necessary for present purposes to
Page 254 U. S. 428
recite the history of the litigation in the proceedings in
Thereafter, the Brake & Electric Company made application in
the district court in Wisconsin, asking to have the benefit of the
decree in Pennsylvania dismissing the bill by setting up that
decree as res judicata.
The district court denied the
petition. Afterwards, on August 19, 1918, the Brake & Electric
Company presented and filed a motion and petition upon which the
Circuit Court of Appeals, Seventh Circuit, rendered the decree
which is now the subject of review.
The petition alleges that the decree in the Pennsylvania suit
was one presenting the same issues as were presented and considered
in the Wisconsin suit; that the plaintiffs were the same, and the
defendants were in privity; that, in the Pennsylvania suit, it was
adjudged, in accordance with the mandate issued by direction of the
Circuit Court of Appeals of the Third Circuit that patent No.
635,280 was issued without warrant, and that the bill of complaint
as to that patent should accordingly be dismissed; that, upon
further proceedings had in the Court of Appeals in the Third
Circuit and the district court in Pennsylvania as to patent No.
621,234, the bill upon that patent was dismissed for want of
prosecution. A transcript of the proceedings in the District Court
of the United States for the Western District of Pennsylvania was
presented, and petitioner stated that it was advised that the
District Court for the Eastern District of Wisconsin had no power
or authority, without the assent of the Circuit Court of Appeals
for the Seventh Circuit, to entertain the motion or application to
set aside or modify the former decree of such district court
affirmed by the circuit court of appeals, but that the circuit
court of appeals had such jurisdiction and power, and that, because
of the final adjudication in the District Court for the Western
District of Pennsylvania, the suit in the District Court of the
Eastern District of Wisconsin should be dismissed on the
Page 254 U. S. 429
motion of the petitioner. The petition recited the proceedings
in the District Court of Wisconsin, and the fact that that court
was proceeding to take an accounting under the former decree. The
prayer of the petition was that the circuit court of appeals take
jurisdiction of the petition, and inquire into and determine the
status of the case, and the force and effect of the final judgment
of the District Court of the Western District of Pennsylvania, and
hold the same to be a final adjudication, and that the petitioner
was entitled to a final decree in the suit in Wisconsin dismissing
the same for want of equity; that the district court be directed to
proceed and act accordingly, and the court was asked to issue such
orders in the premises, and such writ or writs of certiorari or
otherwise as might be necessary or proper, and such further and
different orders, directions, writs, or relief as should seem
proper or necessary.
The Circuit Court of Appeals for the Seventh Circuit refused to
grant any relief upon the petition, holding that the decree of the
Wisconsin court was final in its character, notwithstanding it was
interlocutory in form, and that the decree in the Third Circuit
could not be set up as res judicata
between the parties.
258 F. 880. From that decree, the writ of certiorari brings the
case to this Court.
It thus appears that, in a suit upon a patent and one
subsequently issued alleged to be for the same invention,
Christensen had obtained a decree in the Wisconsin District Court
sustaining the right to a patent monopoly and an accounting. From
this decree, appeal had been taken to the Circuit Court of Appeals
for the Seventh Circuit, where the decree was affirmed and the
cause remanded to the district court, where the accounting was in
progress. Subsequently, Christensen brought the suit in
Pennsylvania upon the patent rights in controversy which resulted
in a decree which, it is contended,
Page 254 U. S. 430
is binding upon Christensen and res judicata
as to the
invalidity of the patent.
In such case, the Brake & Electric Company, if it wished to
avail itself of the Pennsylvania decree, had the right to apply by
petition in the Appellate Court of the Seventh Circuit for leave to
file a bill in the court of original jurisdiction in the nature of
a bill of review, setting up the new matter as a bar to further
proceedings. Such applications are addressed to the sound
discretion of the appellate tribunal, and should be decided upon
considerations addressed to the materiality of the new matter and
diligence in its presentation. Rubber Co. v.
9 Wall. 805; In re Gamewell Co.,
73 F. 908; Keith v. Alger,
124 F. 32; Society of
Shakers v. Watson,
77 F. 512.
The matter was considered in In Re Potts, 166 U.
, where this Court reversed a decree of the
circuit court dismissing a bill upon a patent, holding that the
patent was valid and had been infringed by the defendant, and
remanding the cause to the circuit court for further proceedings.
It was held that the circuit court had no authority to grant or
entertain a petition filed without leave of this Court for a
rehearing for newly discovered evidence, and that mandamus was the
proper remedy to set aside the order of the circuit court failing
to execute the mandate of this Court. The authorities were reviewed
by Mr. Justice Gray, speaking for the Court. Among other things, he
"In this respect, a motion for a new trial or a petition for a
rehearing stands upon the same ground as a bill of review, as to
which Mr. Justice Nelson, speaking for this Court in Southard
above cited, said:"
"Nor will a bill of review lie in the case of newly discovered
evidence after the publication, or decree below, where a decision
has taken place on an appeal, unless the right is reserved in the
decree of the appellate court, or permission be given on an
Page 254 U. S. 431
that court directly for the purpose. This appears to be the
practice of the Court of Chancery and House of Lords in England,
and we think it founded in principles essential to the proper
administration of the law, and to a reasonable termination of
litigation between the parties in chancery suits."
"57 U. S. 16
U. S. 571
. So, in United States v. Knight,
Black 488, 66 U. S. 489
, Chief Justice
Taney said that, in a case brought before this Court exercising
general jurisdiction in chancery,"
"the defeated party, upon the discovery of new evidence, may,
after a final decree in this Court, obtain leave here to file a
bill of review in the court below to review the judgment which this
Court had rendered."
In In Re Potts,
it was held that, unless application
was made to this Court within 20 days for leave to file a petition
for a rehearing in the circuit court, the writ of mandamus would
issue as prayed.
In Potts & Co. v. Creager,
97 F. 78, 79, it appears
from the statement of subsequent proceedings in the case that this
Court, upon application, granted leave to file a petition for
rehearing in the circuit court.
That leave to file a supplemental petition in the nature of a
bill of review may be granted after the judgment of the appellate
court, and after the going down of the mandate at the close of the
term at which judgment was rendered, was held in In Re Gamewell
73 F. 908, in a carefully considered opinion rendered by
the Circuit Court of Appeals for the First Circuit reciting the
previous consideration of the question in cases in this Court. We
think these cases settle the proper practice in applications of
This case is unlike the one before us in Hart Steel Co. v.
Railroad Supply Co., 244 U. S. 294
which it was held that a decree in a patent infringement suit
affirmed by the Circuit Court of Appeals for the Sixth Circuit,
while a like decree was pending but not yet heard before the
Circuit Court of Appeals for the Seventh Circuit, upon a
Page 254 U. S. 432
motion seasonably made in the latter court of appeals, should
have been held to be res judicata
because of the legal
identity of the subject matter and privity of the parties.
In the instant case, the Circuit Court of Appeals for the
Seventh Circuit, treating the application as an original petition
to have the decree made in the Third Circuit pronounced res
held that the former decree in the Seventh Circuit
was final, and denied the prayer of the petition.
In our view, the proper practice in matters of this sort
required the circuit court of appeals to regard the petition,
taking all its allegations together, and with its prayer for
general relief, as an application for leave to file in the district
court a petition in the nature of a bill of review invoking a
consideration of the effect of the judgment in the Third Circuit.
Such consideration the circuit court of appeals may well be
directed to undertake in the exercise of its proper function in
determining the rights of the parties, and, for that purpose, its
judgment should be reversed without passing in this Court upon the
merits of the petition. This procedure is sanctioned by former
decisions of this Court. Lutcher & Moore Co. v.
Knight, 217 U. S. 257
Cramp v. Curtiss Co., 228 U. S. 646
Brown v. Fletcher, 237 U. S. 583
A motion was made to dismiss the writ of certiorari upon the
ground that this case is one in which an appeal might have been
had. But we are of opinion that, in view of the nature of the
application and the status of the case brought for infringement of
the patents in question, the proceeding was not of that character
in which an appeal would lie to this Court. We held in McFadden
v. United States, 213 U. S. 288
that the line of division between cases appealable from the circuit
court of appeals and those made final in that court was determined
Page 254 U. S. 433
source of original jurisdiction of the trial court, and not by
the nature of the questions of law raised or decided.
In our view, the petition filed in the circuit court of appeals
was ancillary to the original jurisdiction invoked, and was still
in its essence and nature a suit involving the validity of a
patent, which is expressly made final in the circuit court of
appeals, subject to the right of this Court to review by writ of
It follows that the decree of the circuit court of appeals
should be reversed, and the case remanded to that court for further
proceedings upon the petition filed by the National Brake &
Electric Company in conformity with the opinion of this Court.