Smith v. Vulcan Iron Works Norton v. Wheaton

Citation41 L.Ed. 810,165 U.S. 518,17 S.Ct. 407
Decision Date15 February 1897
Docket Number639,Nos. 200,s. 200
PartiesSMITH et al. v. VULCAN IRON WORKS. NORTON et al. v. WHEATON
CourtUnited States Supreme Court

In each of these cases, the circuit court of the United States for the Northern district of California, upon a bill in equity for the infringement of a patent for an invention, an answer denying the validity and the infringement of the patent, a general replication, and a hearing, entered an interlocutory decree, adjudging that the patent was valid, and had been infringed, granting an injunction, and referring the case to a master to take an account of profits and damages. From that decree, in each case, the defendant appealed to the circuit court of appeals for the Ninth circuit.

In the first case, the defendant, at the time of taking the appeal, filed in the circuit court an assignment of errors, alleging error in holding that the patent was valid, and that it had been infringed. The plaintiff moved the circuit court of appeals to dismiss the appeal, so far as it involved any question except whether an injunction should be awarded. But that court denied the motion, and, upon a hearing, examined the questions of validity and infringement, decided them in favor of the defendant, and entered a decree reversing the decree of the circuit court. 15 U. S. App. 217, 577, 10 C. C. A. 493, and 62 Fed. 444. On petition of the plaintiff, this court, on January 28, 1895, granted a writ of certiorari to the circuit court of appeals.

In the second case, the circuit court of appeals affirmed the decree of the circuit court (29 U. S. App. 409), but, upon a rehearing, decided that there had been no infringement, reversed its own decree and that of the circuit court, and remanded the case with instructions to dismiss the bill, and afterwards denied a petition for a rehearing and a motion to certify questions of law to this court. 44 U. S. App. 118, 425, 17 C. C. A. 447, and 70 Fed. 833. The circuit court, upon receiving the mandate of the circuit court of appeals, and without hearing the plaintiffs, entered a final decree dismissing the bill. An appeal from this decree was taken by the plaintiff to the circuit court of appeals, and, upon the defendant's motion, and without any hearing on the merits, was dismissed by that court. The plaintiff, on November 9, 1896, presented to this court a petition for a writ of certiorari, and the court thereupon granted a rule to show cause why the writ should not issue to bring up the decree of the circuit court of appeals, 'so that it may be determined whether, upon an appeal from an interlocutory decree granting a temporary injunction in a patent case, the circuit court of appeals can render or direct a final decree on the merits.'

That question was now, by leave of the court, orally argued in both cases; the parties in the first case stipulating in writing that, if the decision of this court upon that question should be in favor of the jurisdiction of the circuit court of appeals, the case should be dismissed by the appellees.

Calderon Carlisle and Wm. G. Johnson, for Ellen L. Smith et al.

John H. Miller, for the Iron Works and Edwin and Oliver Morton.

Milton A. Wheaton, pro se.

Mr. Justice GRAY, after stating the case, delivered the opinion of the court.

The act of March 3, 1891, c. 517, establishing circuit courts of appeals, after providing in section 5, for appeals from the circuit courts and district courts directly to this court in certain classes of cases, and, in section 6, for appeals from final decisions of those courts to the circuit court of appeals in all other cases, including cases arising under the patent laws, further provides, in section 7, that 'where, upon a hearing in equity in a district court, or in an existing circuit court, an injunction shall be granted or continued 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 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, during the pendency of such appeal.' 26 Stat. 828.

The questions presented by each of these cases are whether, in a suit in equity for the infringement of a patent, an appeal to the circuit court of appeals from an interlocutory order or decree of the circuit court, granting an injunction, and referring the case to a master to take an account of damages and profits, may be from the whole order or decree, or must be restricted to that part of it which grants the injunction, and whether the circuit court of appeals, upon such an appeal, may consider and decide the merits of the case, and, if it decides them in the defendant's favor, may order the bill to be dismissed.

Upon these questions there has been some diversity of opinion among the circuit courts of appeals of the different circuits. But those courts have now generally concurred in taking the broader view of the appeal itself, and of the power of the appellate court.

In the earliest of such appeals, the cases were examined on the merits, and, upon a reversal of the order or decree appealed from, the authority to direct the bill to be dismissed was assumed, without question, in the circuit courts of appeals for the Fifth circuit (Dudley E. Jones Co. v. Munger Imp. Cotton-Mach. Manuf'g Co. [Dec., 1891] 2 U. S. App. 55, 1 C. C. A. 668, and 50 Fed. 785), for the First circuit (Richmond v. Atwood [Feb., 1892] 5 U. S. App. 1, 1 C. C. A. 144, and 48 Fed. 910), and for the Second circuit (American Paper Pail & Box Co. v. National Folding Box & Paper Co. [July, 1892] 1 U. S. App. 283, 2 C. C. A. 165, and 51 Fed. 229). The cases in the Fifth and First circuits were afterwards reconsidered upon petitions for rehearing. In the Fifth circuit, the decree was modified so as only to direct the injunction to be dissolved. Dudley E. Jones Co. v. Munger Imp. Cotton-Mach. Manuf'g Co. (May, 1892) 2 U. S. App. 188, 1 C. C. A. 668, and 50 Fed. 785. But in the First circuit the power of the circuit court of appeals, upon such an appeal, to consider the merits of the case, and to order the bill to be dismissed, was maintained, after thorough discussion of the subject, on principle and authority, in an opinion delivered by Judge Aldrich. Richmond v. Atwood (Sept., 1892) 5 U. S. App. 151, 2 C. C. A. 596, and 52 Fed. 10.

This view has since prevailed, not only in the First circuit (Marden v. Manufacturing Co. [May, 1895] 33 U. S. App. 123, 15 C. C. A. 26, and 67 Fed. 809; Wright & Colton Wire Cloth Co. v. Clinton Wire-Cloth Co. [May, 1895] 33 U. S. App. 188, 206, 236, 14 C. C. A. 646, and 67 Fed. 790), but also in the Second circuit (Construction Co. v. Young [Dec., 1892] 11 U. S. App. 683, 685, 8 C. C. A. 231, and 59 Fed. 721; Cycle Co. v. Featherstone [Aug., 1893] 14 U. S. App. 632, 655, 6 C. C. A. 487, and 57 Fed. 631; Curtis v. Wheel Co. [Dec., 1893] 20 U. S. App. 146, 7 C. C. A. 493, and 58 Fed. 784; Westinghouse Air-Brake Co. v. New York Air-Brake Co. [Oct., 1894] 26 U. S. App. 248, 358, 11 C. C. A. 528, and 63 Fed. 962; Manufacturing Co. v. Griswold [April, 1895] 35 U. S. App. 246, 15 C. C. A. 161, and 67 Fed. 1017), in the Third circuit (Union Switch & Signal Co. v. Johnson Railroad Signal Co. [May, 1894] 17 U. S. App. 609, 611, 620, 10 C. C. A. 176, and 61 Fed. 940; Erie Rubber Co. v. American Dunlop Tire Co. [July, 1895] 28 U. S. A.pp. 470, 513, 522, 16 C. C. A. 632, and 70 Fed. 58), in the Seventh circuit (Temple Pump Co. v. Goss Pump & Rubber Bucket Manuf'g Co. [Oct., 1893] 18 U. S. App. 229, 7 C. C. A. 174, and 58 Fed. 196; Repair Co. v. Beckwith's Ex'rs [Oct., 1893] 18 U. S. App. 245, 7 C. C. A. 160, and 58 Fed. 182; Electric Manuf'g Co. v. Edison Electric Light Co. [May, 1894] 18 U. S. App. 637, 643, 10 C. C. A. 106, and 61 Fed. 834; Card v. Colby [Nov., 1894] 24 U. S. App. 460, 480, 486, 12 C. C. A. 319, and 64 Fed. 594; Standard Elevator Co. v. Crane Elevator Co. [Oct., 1896] 46 U. S. App. 411, 22 C. C. A. 549, and 76 Fed. 767), in the Eighth circuit (Lockwood v. Wickes [June, 1896] 40 U. S. App. 136, 21 C. C. A. 257, and 75 Fed. 118, overruling same case [Dec., 1895] 36 U. S. App. 321, 21 C. C. A. 257, and 75 Fed. 118), and in the Ninth circuit (Consolidated Piedmont Cable Co. v. Pacific Cable Ry, Co. [July, 1893] 15 U. S. App. 216, 7 C. C. A. 195, and 58 Fed. 326; Butte City St. Ry. v. Pacific Cable Ry. Co. [Feb., 1894] 15 U. S.App. 341, 9 C. C. A. 41, and 60 Fed. 410; Vulcan Iron Works v. Smith [May, 1894] 15 U. S. App. 577, 10 C. C. A. 493, and 62 Fed. 444; Wheaton v. Norton [Jan., 1895] 29 U. S. App. 409, and [Oct., 1895] 44 U. S. App. 118, 170, 17 C. C. A. 447, and 70 Fed. 833).

In the Fourth circuit, the question does not appear to have arisen in a patent case. But where, upon a bill in equity to restrain a supervisor of registration from interfering with the right to vote at the election of delegates to a convention to revise the constitution of the state of South Carolina, the circuit court of the United States for the district of South Carolina had, by successive orders, granted and continued a temporary injunction, the circuit court of appeals, upon appeal from these orders, entered a decree, not only reversing the orders, but directing the bill to be dismissed,—the chief justice saying, 'Although the appeal is from interlocutory orders, yet, as we entertain no doubt that such a bill cannot be maintained, we are constrained, in reversing these orders, to remand the cause with a direction to dismiss the bill.' Green v. Mills (1895) 25 U. S. App. 383, 398, 16 C. C. A. 516, and 69 Fed. 852. An appeal from that decree was dismissed by ...

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