In a patent infringement suit, an appeal may be taken under §
129 of the Judicial Code, as amended, 28 U.S.C. § 227a, from an
"order" denying on the merits a motion to set aside (because of
unlawful use of the patent) an earlier decree which held the patent
valid and infringed and was "final except for the ordering of an
accounting." Pp.
331 U. S.
98-100.
(a) Since it left nothing to be done except to conduct an
accounting, the order falls squarely within § 129, as amended. P.
331 U. S.
99.
(b) Under Rule 54 of the Federal Rules of Civil Procedure, the
fact that the Court designated its action as an "order," instead of
a "decree," is immaterial. P.
331 U. S.
99.
(c) Nor is such an order rendered nonappealable because one
appeal had already been taken. Pp.
331 U. S.
99-100.
156 F.2d 343 reversed.
In a patent infringement suit, a Circuit Court of Appeals
dismissed an appeal under § 129 of the Judicial Code, as amended,
28 U.S.C. § 227a, from an order denying a motion to set aside a
decree holding the patent valid and infringed and ordering an
accounting. 156 F.2d 343. This Court granted certiorari. 329 U.S.
712.
Reversed, p.
331
U. S. 100.
Page 331 U. S. 97
MR. JUSTICE BLACK delivered the opinion of the Court.
In an earlier phase of this patent infringement suit, a patent
owned by respondent Kammerer was held valid and infringed by the
petitioner. An accounting for profits and damages was ordered. 39
F. Supp. 213. The Circuit Court of Appeals affirmed. 138 F.2d 482.
We granted certiorari to consider whether a license agreement
between respondents Kammerer and Baash-Ross contained restrictions
which were contrary to public policy and unlawful so as to bar
recovery against petitioner. On oral argument of the case here, it
developed that no findings of fact had been made by the District
Court on this issue, nor had the question been presented to or
passed on by the Circuit Court of Appeals. We therefore dismissed
the writ of certiorari.
323 U. S. 327.
On remand, the Circuit Court of Appeals did not disturb its
original affirmance of the District Court's holding that the patent
was valid and infringed. But, on motion of the petitioner, the
court amended its judgment of affirmance so as to authorize the
District Court to
"entertain a motion or motions . . . to modify or set aside its
order or orders for . . . damages and accountings thereof, and take
such action as it may determine"
concerning petitioner's contention that respondents' unlawful
use of the patent should bar all recovery for infringement. 148
F.2d 525, 526. Thereafter, the petitioner presented a motion to the
District Court in which he alleged respondents had, contrary to the
public interest, used the patent to restrain trade, fix prices, and
suppress competition. Relying on these allegations, petitioner
asked the Court to stay the accounting and to render a final
judgment dismissing the complaint on the ground that respondents
had illegally misused the patent. Without introducing further
evidence, both parties submitted the motion to the District Court
on facts already in the record. After an
Page 331 U. S. 98
argument, the Court made extensive findings of fact against
petitioner, concluded that his defense had not been established,
and entered an order denying his motion to stay the accounting and
to enter a final judgment dismissing the complaint. The Circuit
Court of Appeals dismissed petitioner's appeal from the District
Court's disposition of his motion on the ground that the District
Court's order was "not a decree, final or otherwise." 156 F.2d 343,
345. We hold that the appeal was erroneously dismissed.
The Act of February 28, 1927, 44 Stat. 1261, 28 U.S.C. § 227a,
provides that,
"when in any suit in equity for the infringement of letters
patent for inventions, a decree is rendered which is final except
for the ordering of an accounting, an appeal may be taken from such
decree to the circuit court of appeals. . . ."
The object of this 1927 amendment to § 129 of the Judicial Code
was to make sure that parties could take appeals in patent equity
infringement suits without being compelled to await a final
accounting. The reports of the Congressional committees on the
measure called attention to the large expenses frequently involved
in such accountings and the losses incurred where recoveries were
ultimately denied by reversal of decrees on the merits. [
Footnote 1]
And see Brick
v.
Page 331 U. S. 99
A. I. Namm & Sons, Inc., 21 F.2d 179. It was for
this reason that Congress authorized departure in this type of case
from the usual practice under which appeals are not allowed under
which a final judgment which disposes of all phases of a
controversy.
See Catlin v. United States, 324 U.
S. 229,
324 U. S.
233.
Nor do the unusual circumstances under which this order was
rendered make it any the less appealable. Whether or not the
District Court would have had authority on its own motion to reopen
the proceedings to consider the alleged misuse of the patent,
see Marconi Wireless Telegraph Co. v. United States,
320 U. S. 1,
320 U. S. 47-48,
it was proper for it to do so after the Circuit Court of Appeals
amended its judgment as it did. After reopening the case, the
District Court gave full consideration to the question presented by
the motion, and decided it upon the merits.
See Bowman v.
Loperena, 311 U. S. 262.
There was then nothing that remained to be done except to conduct
an accounting. Therefore, the resulting order falls squarely within
§ 129 as amended. The fact that the Court designated its action as
an "order", rather than a "decree" is not of crucial significance.
See Rule 54, Rules of Civil Procedure. [
Footnote 2] For, though called an "order,"
its binding effect in disposing of the question before it is the
same as though it had been entitled a "decree." Nor is
Page 331 U. S. 100
the order rendered nonappealable because one appeal had already
been taken, any more than it would have been had the first decree
been reversed
in toto and this order entered after the
reversal. Since the order denying petitioner's motion for a
judgment of dismissal of respondents' claim is, within the meaning
of § 129, "final except for the ordering of an accounting," it is
appealable.
Reversed.
[
Footnote 1]
The House Committee on Patents expressed the belief that the
legislation
"is needed to prevent a great burden of expense to litigants in
actions to determine the validity of patents, where an accounting
is involved. . . . Under present procedure, appeals may be taken
from the interlocutory decree upholding the patent, but not until a
full accounting has been made to the court. Under this bill, such
appeal can be taken from such interlocutory decree . . . so as to
obviate the cost of an accounting in the event the case is reversed
on appeal."
H.R.Rep. No.1890, 69th Cong., 2d Sess. 1 (1927).
The Senate Committee emphasized the same expense incident to
conducting an accounting before the merits had been determined on
appeal. It apparently went on the assumption that § 129 already
authorized appeals prior to accounting from an injunction against
infringement. It wanted to permit an appeal prior to accounting
whether there was an effective injunction outstanding or not, even
though a patent had expired making inappropriate an injunction
against its continued violation. Sen.Rep. No.1319, 69th Cong., 2d
Sess. 1 (1927).
This case presents the precise situation which the Senate
Committee thought the Act was designed to avoid, in that it happens
here that the patent has expired. But both reports indicate that
the purpose of the Act was to permit appeals whenever everything
but an accounting had been accomplished.
[
Footnote 2]
"
Judgment' as used in these rules includes a decree and any
order from which an appeal lies." Rule 54, F.R.C.P.