258 U.S. 82 (1922), 57, John Simmons Company v. Grier Brothers Company

Docket Nº:No. 57
Citation:258 U.S. 82, 42 S.Ct. 196, 66 L.Ed. 475
Party Name:John Simmons Company v. Grier Brothers Company
Case Date:February 27, 1922
Court:United States Supreme Court

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258 U.S. 82 (1922)

42 S.Ct. 196, 66 L.Ed. 475

John Simmons Company

v.

Grier Brothers Company

No. 57

United States Supreme Court

Feb. 27, 1922

Argued November 8, 1921

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE THIRD CIRCUIT

Syllabus

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. 88.

2. An interlocutory decree may be modified or rescinded by the court at any time before final decree. P. 88.

3. Whether a decree is final or interlocutory depends upon its essential purport and effect, and not upon its characterization in pleadings. P. 89.

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. 89. Smith v. Vulcan Iron Works, 165 U.S. 518, and Hill v. Chicago & Evanston R. Co., 140 U.S. 52, distinguished.

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. 91.

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. 91

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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. 91.

8. Omission to apply to this Court for certiorari to an interlocutory decree held not laches. P. 91.

9. Abercrombie & Fitch Co. v. Baldwin, 245 U.S. 198, upholding Claim 4 of Baldwin lamp patent, followed. P. 91.

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 mandate.

PITNEY, J., lead opinion

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 [42 S.Ct. 197] 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.

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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 that court

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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. 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...

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