1. A bill of review is called for only after a final decree
adjudicating upon the entire merits and leaving nothing further to
be done except the execution of it. P. 258 U. S.
2. An interlocutory decree may be modified or rescinded by the
court at any time before final decree. P. 258 U. S.
3. Whether a decree is final or interlocutory depends upon its
essential purport and effect, and not upon its characterization in
pleadings. P. 258 U. S.
4. A decree in a suit for patent infringement and unfair
competition, dismissing the bill as to the former ground and
granting a permanent injunction as to the latter, but leaving the
case pending for an accounting before a master, is interlocutory as
an entirety, permitting the plaintiff, if diligent, to seek a
rehearing of the dismissal. P. 258 U. S. 89
Smith v. Vulcan Iron Works, 165 U.
, and Hill v. Chicago & Evanston R.
Co., 140 U. S. 52
5. A proceeding to reopen by rehearing or bill of review a
decree entered on a mandate of an appellate court should first be
referred to that tribunal. P. 258 U. S.
6. The fact that a party, to carry on his suit, moved execution
of a mandate directing & decree partly adverse to himself,
after his right of appeal was exhausted, did not make the resulting
decree a decree by consent. P. 258 U. S. 91
Page 258 U. S. 83
7. A decision of this Court upholding a patent claim is ample
ground for rehearing in a pending suit between other parties in
which the same claim has been adjudged void. P. 258 U. S.
8. Omission to apply to this Court for certiorari to an
interlocutory decree held
not laches. P. 258 U. S.
9. Abercrombie & Fitch Co. v. Baldwin, 245 U.
, upholding Claim 4 of Baldwin lamp patent,
followed. P. 258 U. S.
265 F. 481 reversed.
Certiorari to review a decree of the circuit court of appeals
reversing a decree entered by the district court after a rehearing,
in a suit for patent infringement and unfair competition and
directing reinstatement of another previously entered under its
MR. JUSTICE PITNEY delivered the opinion of the Court.
In October, 1913, Frederic E. Baldwin, a citizen of New York,
together with the present petitioner John Simmons Company, a
corporation and citizen of that state, brought suit in the United
States District Court for the Western District of Pennsylvania
against the Grier Bros. Company, a corporation and citizen of the
latter state, charging infringement of reissued letters patent No.
13,542, issued to and owned by Baldwin, and under which the Simmons
Company was sole licensee, for certain improvements in acetylene
gas lamps intended for various uses, especially that of miners'
lanterns. The bill charged also unfair competition with plaintiffs
by the sale of lamps made to resemble the Baldwin lamp manufactured
under the patent. The district court granted a preliminary
injunction as to unfair competition, but reserved the question of
patent infringement for final hearing.
Page 258 U. S. 84
210 F. 560. Upon that hearing, the court held Claim 4 of the
Baldwin reissue patent valid and infringed, and awarded a permanent
injunction upon both grounds, July 24, 1914, with an interlocutory
decree for an accounting. 215 F. 735. Upon appeal by defendant (the
present respondent), the Circuit Court of Appeals for the Third
Circuit affirmed the decree as to unfair competition, but reversed
it as to patent infringement, holding the reissue to be void as to
Claim 4 upon the ground that this broadened the original patent.
Grier Bros. Co. v. Baldwin,
219 F. 735, 739. This decision
was rendered January 22, 1915, and the mandate went down about a
month later setting forth the decree of the appellate court that
the decree of the district court be
"affirmed as to so much thereof as refers to the subject of
unfair competition, but the rest of the decree must be modified in
accordance with the opinion of this Court,"
and that the appellant recover costs and have execution
therefor, and thereupon commanding that execution and further
proceedings be had according to right and justice. No decree was
entered upon this in the district court until January 5, 1916,
when, on motion of plaintiffs, an order was entered that the decree
of the circuit court of appeals be made the decree of the district
court, that plaintiffs recover from defendant their damages
sustained by reason of unfair trade to be ascertained and reported
by a master to whom reference was made for the purpose, that a
perpetual injunction be issued restraining defendant from further
unfair competition in trade, and that the bill of complaint as to
infringement of the reissue patent be dismissed. The accounting
before the master is still pending.
In May, 1913, Baldwin had brought suit (John Simmons Company
intervening) upon the same reissue patent in the United States
District Court for the Southern District of New York against
Abercrombie & Fitch Company (Justrite Company intervening), and
Page 258 U. S. 85
adjudged the patent valid and infringed. 227 F. 455. On appeal,
this decree was affirmed by the Circuit Court of Appeals for the
Second Circuit, November 9, 1915. 228 F. 895. On December 20, 1915,
defendants in that suit presented to this Court a petition for a
writ of certiorari; January 10, 1916, this writ was granted
(Abercrombie & Fitch Co. v. Baldwin,
239 U.S. 649),
and under it, on December 10, 1917, the decision of the Circuit
Court of Appeals for the Second Circuit was affirmed, this Court
holding, in direct opposition to the decision of the Circuit Court
of Appeals for the Third Circuit, that Claim 4 of the reissue was
valid, 245 U. S. 245
198. A mandate was sent down January 15, 1918, to the District
Court for the Southern District of New York, and the proper decree
was promptly entered thereon.
Soon after this, plaintiffs herein petitioned the District Court
for the Western District of Pennsylvania for leave to file what was
called a "bill of review" against its decree of January 5, 1916.
The court in the first instance refused, but without prejudice to
an application to the Circuit Court of Appeals for the Third
Circuit for leave to file such bill. Upon application, that court
granted plaintiffs leave to make the application to the district
court, and authorized the latter court to take action thereon.
Under this leave, application was renewed to the district court,
the proposed "bill of review" being at the same time presented, and
with leave of the court filed. This bill sets out the original bill
and the proceedings had thereunder, as above recited, also the
proceedings in the suit in the Second Circuit and the final
decision of the court therein, alleging these as "new facts" that
had arisen since the decree entered in the District Court for the
Western District of Pennsylvania on the 5th of January, 1916, and
as showing that that decree was erroneous and contrary to law,
insofar as (pursuant to the opinion of the Circuit Court of Appeals
for the Third Circuit) it dismissed the bill as to infringement of
Page 258 U. S. 86
patent and failed to decree a perpetual injunction and
ascertainment of damages as to infringement; prayed that the cause
might be reopened and the decree rescinded and set aside insofar as
it dismissed the patent cause of action, and a new decree entered
granting the relief prayed for in the original bill. Defendant
answered, admitting in the main, or at least not denying, the
allegations of the so-called bill of review as to the former
proceedings and decrees in the courts of the two circuits, but
denying that the lamp involved in the Abercrombie & Fitch
Company suit (the "Justrite lamp") corresponded in essential
features of construction with the "Grier lamp" involved in the
present suit; averring that the decisions of the circuit courts of
appeals of the two circuits were not rendered on the same state of
facts; that the bill was "in fact only a petition for rehearing
because of the decision of the Supreme Court referred to therein;"
and that the decision of this Court in the Abercrombie & Fitch
Company suit formed no basis for a bill of review.
Afterwards, John Simmons Company, by leave, filed a supplemental
bill setting up that it had acquired from Baldwin all his rights in
the reissue patent, including all claims for damages and profits on
account of the infringement. Defendant having answered this,
testimony was taken to show the structural identity of the
"Justrite" and the "Grier" lamps, and the cause came to hearing,
with the result that the district court found substantial identity
between the two lamps in all essential features of construction,
sustained the right of plaintiffs to maintain the bill of review,
and held that its former decree, entered pursuant to the mandate of
the circuit court of appeals, so far as it held the reissue patent
invalid, should be vacated and set aside, and a decree entered
sustaining the validity of Claim 4 of the reissue, finding
defendant guilty of infringement thereof, and plaintiffs entitled
to an accounting of profits and a perpetual injunction.
Page 258 U. S. 87
From the decree thus entered, an appeal was taken to the circuit
court of appeals, which reversed it and remanded the cause, with
directions to reinstate the decree of January 5, 1916. Grier
Bros. Co. v. Baldwin,
265 F. 481. To review this decision, the
present writ of certiorari was allowed. 253 U.S. 482.
The district court, as will appear from an excerpt from its
opinion reported in a note to the opinion of the circuit court of
appeals, 265 F. 483, treated the case as one based upon a true bill
of review, and this as resting not upon new matter that had arisen
since the decree, but upon error of law apparent on the face of the
record without further examination of matters of fact.
The circuit court of appeals, upon a recital of the different
steps in the litigation, regarded the situation as one of
plaintiffs' own creation, for the reason that, after that court's
decision on the original bill, but before the mandate went down,
although apprised of the contrary decision of the District Court of
the Southern District of New York in a cause to which they were
parties, plaintiffs made no request to the Circuit Court of Appeals
for the Third Circuit to withhold its mandate; that, after the
mandate went down and before a decree pursuant to it was entered in
the court below, they knew of the affirmance of the decision of the
district court of New York by the Circuit Court of Appeals for the
Second Circuit, yet made no request to either court in the Third
Circuit to have the entry of a decree withheld; that, on the
contrary, with knowledge that this Court had under consideration a
petition for certiorari in the Second Circuit case, they prepared
and of their own motion caused to be entered on January 5, 1916,
the decree dismissing their suit as to the patent infringement, and
after this Court, on January 10, 1916, granted the certiorari, they
allowed the term to end without moving to suspend, open, or vacate
the decree of January 5. The court held that, in effect, so far as
plaintiffs were concerned, that decree was a consent decree,
Page 258 U. S. 88
and, while not going to the extend of holding that this was
sufficient to bar them from maintaining the bill of review, did
declare that the anomalous situation and consequent hardship
arising from the fact that a patent adjudged valid in one circuit
by this Court at the same time had been adjudged invalid by the
circuit court of appeals in another circuit was due not to any
fault of the law or of the patent system, but to the failure of
plaintiffs to take steps that might have avoided it. Proceeding to
consider the legal question whether the decision of this Court in
Abercrombie & Fitch Co. v. Baldwin, 245 U.
, either showed an error of law apparent on the
face of the record without further examination of matters of fact
or constituted a new fact discovered since the decree and
materially affecting it, the court held, on the authority of
Scotten v. Littlefield, 235 U. S. 407
235 U. S. 411
Tilghman v. Werk,
39 F. 680, and Hoffman v. Knox,
50 F. 484, that the bill of review could not be maintained.
The cases cited are to the effect that, in the application of
the ancient rule of practice in equity, based upon Lord Bacon's
first ordinance (Story, Eq. Pl., 6th ed., § 404), a change in the
authoritative rule of law, resulting from a decision by this Court
announced subsequent to the former decree, neither demonstrates an
"error of law apparent" upon the face of that decree nor
constitutes new matter in pais justifying a review.
But a bill of review is called for only after a final decree --
one that finally adjudicates upon the entire merits, leaving
nothing further to be done except the execution of it. If it be
only interlocutory, the court at any time before final decree may
modify or rescind it. Story, Eq. Pl. §§ 408(a), 421, 425. In the
so-called bill of review herein, it is in terms alleged that the
decree of the District Court for the Western District of
Pennsylvania, entered July 24, 1914, was an interlocutory decree.
The same is alleged as to the decree of January 5, 1916. Both
Page 258 U. S. 89
are admitted by the answer, which at the same time asserts that
the "bill of review" is in fact only a petition for rehearing.
Obviously, the nature of the decree is to be determined by its own
essential purport and effect, not by the statements of the pleaders
about it. But an examination of the record demonstrates that they
correctly described the decree as interlocutory.
The decree of July 24, 1914, although following a "final
hearing," was not a final decree. It granted to plaintiffs a
permanent injunction upon both grounds, but an accounting was
necessary to bring the suit to a conclusion upon the merits. An
appeal taken to the circuit court of appeals, whose jurisdiction,
under § 129, Judicial Code, extended to the revision of
interlocutory decrees granting injunctions, followed by the
decision of that court reversing in part and affirming in part, did
not result in a decree more final than the one reviewed. The prayer
for relief based upon infringement of patent and that based upon
unfair competition in trade were but parts of a single suit in
equity. The decree entered pursuant to the decision of the
appellate court did not bring the suit to a conclusion for either
purpose. As to unfair competition, it evidenced a
-definitive decision in plaintiffs' favor, but an
inquiry before a master still was necessary before final decree
could pass; an inquiry not formal or ministerial, but judicial, in
order to ascertain the amount of the damages to be awarded. As to
the claim of patent infringement, the decree evidenced a
-definitive decision adverse to plaintiffs, which, if
nothing occurred to prevent, would in due course be carried into
the final decree. But it did not constitute a separation of the
cause, nor dismiss defendant from the jurisdiction for any purpose;
necessarily this decision remained in abeyance until the cause
should be ripe for final decree; there was nothing to take the case
out of the ordinary rule that there can be but one final decree in
a suit in equity.
Page 258 U. S. 90
Smith v. Vulcan Iron Works, 165 U.
, 165 U. S. 525
where it was held by this Court, after some diversity of opinion
among the circuit courts of appeals of the different circuits, that
an appeal to one of those courts under § 7 of the Act of 1891, from
which § 129 Judicial Code was derived, taken from an interlocutory
decree granting an injunction and awarding an accounting in a
patent case, conferred jurisdiction upon the appellate court to
consider and decide the case upon its merits, and thereupon direct
a final decree dismissing the bill if, in its judgment, it had no
equity to support it, differed vitally from the case before us,
since there, an adverse decision upon the patent disposed of the
entire merits, the suit having no other object. Nor was the
situation presented in the present case analogous to that passed
upon by this Court in Hill v. Chicago & Evanston Railroad
Co., 140 U. S. 52
arose out of its decision in 129 U. S. 129
170. There, a decree was held final for the purposes of an appeal
which dismissed the bill as to certain parties and denied relief
"upon all matters and things in controversy," although it left
undetermined a severable matter in which those parties had no
interest. The test of finality here to be applied is rather that
exemplified by Keystone Iron Co. v. Martin, 132 U. S.
, and cases cited. In Ex parte National Enameling
Co., 201 U. S. 156
201 U. S. 165
it was pointed out that the rule of the Hill
apply to a case in which there is but a single defendant.
Regarding, therefore, the decree of January 5, 1916, as an
interlocutory, not a final, one, there is neither technical nor
substantial ground for applying to it the rules pertaining to a
bill of review, and the bill herein called such is to be treated as
essentially a petition for rehearing. By the sixty-ninth Equity
Rule, such a petition is in order at the term of the entry of the
final decree; and, of course, if an interlocutory decree be
Page 258 U. S. 91
rehearing may be sought at any time before final decree,
provided due diligence be employed and a revision be otherwise
consonant with equity.
As the decree in question was entered pursuant to the mandate of
an appellate court, proper deference to its authority required that
a proceeding to reopen it, whether by rehearing or review, should
be first referred to that tribunal. Southard
16 How. 547, 57 U. S.
-571; In re Potts, 166 U.
, 166 U. S. 267
National Brake Co. v. Christensen, 254 U.
, 254 U. S.
That having been done in this case, and leave for the purpose
obtained (leave to grant a "review" fairly included any step short
of that), what obstacle stood in the way of correcting the decree?
The suit was still pending; plaintiffs applied promptly after the
decision of this Court in the Abercrombie & Fitch Co.
suit, 245 U. S. 198
was eminently proper that the decree in the present suit should be
made to conform to that decision in the absence of some special
obstacle. We cannot assent to the view of the court below that
plaintiffs may be regarded as consenting to the decree of January
5, 1916; they simply accepted an adverse decision as to a part of
their suit not open to further appeal at their instance, and
proceeded in the orderly mode to pursue their suit as to the rest.
They were not guilty of laches for omitting at that stage to make
application to this Court for allowance of a writ of certiorari.
That mode of review is not a right of the party, but lies in this
Court's discretion; peradventure the very fact that a final decree
had not yet been entered might have been deemed a sufficient ground
for refusing the writ. Hamilton Shoe Co. v. Wolf Bros. &
Co., 240 U. S. 251
240 U. S. 254
240 U. S.
Our decision in Abercrombie & Fitch Co. v. Baldwin,
245 U. S. 198
must be taken as not only demonstrating that the circuit court of
appeals erred in its disposition of this case upon the first appeal
(219 F. 735), but that
Page 258 U. S. 92
the error, even though not amounting to "error apparent," within
the meaning of Lord Bacon's first ordinance, afforded ample ground
for setting matters right upon a rehearing before final decree, as
was in effect done by the district court. No sufficient ground is
shown for the reversal of its latest decree.
Decree of the circuit court of appeals reversed, and that of
the district court affirmed, and the cause remanded to that court
for further proceedings in conformity to this opinion.