67 F. 809 | 1st Cir. | 1895
This, was a bill by a patentee alleging infringement. After hearing the cause on bill, answer, and proofs, the circuit court entered the usual decree directing a perpetual injunction and an accounting on a portion of the claims contained in
The defendants in the court below have filed two motions in this court, which we have considered. The first is that the cause be remanded to the circuit court “for the purpose of a rehearing of the said cause,” having reference undoubtedly to the new matter presented to the circuit court, to which we have referred. This court, however, has no power to remand except for the purpose of giving effect to some judgment of its own. Roemer v. Simon, 91 U. S. 149; Smith v. Weeks, 3 C. C. A. 644, 53 Fed. 758. This is so essential by fundamental rules of practice that it need only be stated. To remand under any other circumstances would necessarily operate as a dismissal. It is, however, entirely plain that the appeal given by the seventh section of the act referred to is a privilege or option, and in no way affects or diminishes the right to appeal from the final decree; and as the defendants below, on receiving from this court an oral intimation of the views above expressed, elect to dismiss their appeal, without prejudice to their right to take any other appeal which the law may give them, and without prejudice to the questions which may thus be raised, we permit them so to do.
The second motion of the defendants below was to dismiss the cross appeal of the complainant below. The question is whether the complainant below was entitled to take a cross appeal, or to appeal in its own right, from the interlocutory decree. This question not only compels us to examine the statute itself, but also, to a certain extent, to restate the decisions of this court in Richmond v. Atwood, 2 C. C. A. 596, 52 Fed. 10, and Gamewell Fire Alarm Tel. Co. v. Municipal Signal Co., 9 C. C. A. 450, 61 Fed. 208. We are unable to see any doubt as to the intent, scope, or effect of these decisions, and yet they seem to have been misunderstood to some extent. From the beginning of the federal judicial system, no appeal was allowed to the supreme court except by analogy to a writ of error; and, as the latter could only go from a final judgment, so the former, by statute, has always been expressly limited to a final decree. This was so in the original judiciary act of 1789, and in the amendatory act of 1803, as re enacted in sections 691 and 692 of the Revised Statutes. This limitation has been for the most part very strictly
We have already said that the provisions of the statute allowing appeals from final decrees only had been strictly construed, and yet the complainant below claims that so much of the decree below' as adjudged certain claims invalid, or not infringed, was final, and entitled the complainant to appeal, independently of the seventh section of the act of March 3, 1891. On the contrary, the practice has been so continuous for so long a time the other way, and with such universal acquiescence, that this proposition, so far as we know, has never before been made, nor any necessity arisen for its adjudication. This long-continued recpgnition of the rule ought to be of itself a sufficient answer to the complainant’s proposition. There have been exceptional instances where the case below has been severed and appeals allowed from a decree which did not complete the entire case. Forgay v. Conrad, 6 How. 201, and Potter v. Beal (decided by this court) 2 C. C. A. 60, 50 Fed. 860, were of this exceptional class. In those cases the appeals were allowed ex necessitate rei, as in each case the court below not only severed the matter appealed from, but was proceeding to execution. The general rule, however, is undoubtedly expressed, as to writs of error, in Holcombe v. McCusick, 20 How. 552, 554, as follows:
“It is the settled practice of this court, and the same in the king’s bench in England, that the Writ will not lie until the whole of the matters in*813 controversy in the suit below are disposed of. The writ itself is conditional, and does not authorize the court below to send up the case unless all the matters between the parties to the record have been determined.”
This statement of the rule was applied to equity appeals in Hohorst v. Packet Co., 148 U. S. 262, 13 Sup. Ct. 590. The settled practice of the supreme court touching appeals and writs of error is such as to prevent the same case reaching it a multiplicity of times, so far as practicable to accomplish this; and, moreover, by the settled modes of proceedings in equity in a cause of this kind, although there may be an interlocutory finding declaring certain claims void and others valid, yet there is only one final decree. It would be contrary to all well-conceived notions to imagine two final decrees in a patent cause of this character. The proposition, of the complainant below in this direction cannot be entertained.
As a new question, it must be admitted that much might have been said in favor of the proposition that, where the circuit court has granted -a perpetual injunction, as in this case, and proceeded immediately to execute it, so much of the case is ex necessitate rei severed and appealable; but as early as Barnard v. Gibson, 7 How. 650, it was determined otherwise by the supreme court. At the conclusion of its opinion in that case, the court referred to the claim of the great hardship involved in the enforcing of an injunction against the defendants, which might afterwards be held by the supreme court erroneous, and to the consequent remediless condition of the defendants under those circumstances. Touching this, the court said, on page 658, as follows:
“The hardship stated is an unanswerable objection to the operation of the injunction until all the matters shall be finally adjusted. If the injunction has been inadvertently granted, the circuit court has power to suspend it or set it aside until the report of the master shall bo sanctioned. And unless the defendants below are in doubtful circumstances, and cannot give bond to respond in damages for the use of the machines, should the right of the plaintiff be finally established, we suppose that the injunction will be suspended. Such is a correct course of practice, as indicated by the decisions of this court, and that is a rule of decision for the circuit court.”
It is, however, a matter of history that this caution from the supreme court has been too largely disregarded by the circuit courts; and, in some cases, all the hardship claimed in Barnard v. Gibson as possible, and even greater hardships, have resulted. Out of this undoubtedly grew the seventh section referred to.
An examination of the reports will show that the relief which this seventh section intended to give was needed as much in behalf of those against whom perpetual injunctions had issued, after hearing on bill, answer, and proofs, as in behalf of those who suffered from merely ad interim decrees which were subsequently found to be erroneous. One example is Pennsylvania R. Co. v. Locomotive Engine Safety Truck Co., 110 U. S. 490, 4 Sup. Ct. 220, wherein an interlocutory perpetual injunction was issued in 1874, the patent expired in 1879, and the decree ordering the injunction was reversed by the supreme court in 1884. The amounts involved were very large, said to run into the hundreds of thousands of dollars, and the loss, as to which the defendants below were remediless, might
TMs undoubtedly has always been the view of this court, and, so far as we are aware, of all the other circuit courts of appeals. We are not aware that it has ever before been even suggested that a complainant is entitled to an appeal under the seventh section. In Gamewell Fire Alarm Tel. Co. v. Municipal Signal Co., 9 C. C. A. 450, 61 Fed. 208, already referred to, the court decided that, where the interlocutory injunction terminated by force of law pending the appeal, there remained nothing for the judgment of this court to act on, and that this court would therefore not go any further, nor consider whether or not the injunction was properly granted, and that it could only dismiss the appeal. This means that the backbone oí our jurisdiction under the seventh section is so much of the decree as relates to the injunction; and it necessarily follows, from the views therein entertained, that, so much of the case as is covered by the injunction having been disposed of, no basis remains for further proceedings on the part of this court. We need not, however, discuss tMs question to any further extent, because the act of February 18,1895, has so far modified the seventh section referred to as to open up possibilities of appeal by the complainant which did not before exist, and any judgments which we may now pronounce, beyond disposing of the precise question before us, would evidently soon prove obsolete, and probably of no importance. We will, however, remark
It is ordered that the appeal of the defendants below be dismissed, without prejudice to any proceedings in the circuit court, or to their right to take any subsequent appeal, and without prejudice to the questions which may be raised by such subsequent appeal, if lawfully taken, but with costs for the complainant below, and that the appeal of the complainant below be dismissed, with costs for the defendants below.