41 994 In re Potts et al

• Decision Date: 15 March 1897
• Docket Number: No. 12,12
• Citation: 166 U.S. 263,17 S.Ct. 520
• Parties: ` 41 L.Ed. 994 In re POTTS et al
• Court: U.S. Supreme Court

166 U.S. 263

17 S.Ct. 520`

41 L.Ed. 994

In re POTTS et al.

No. 12.

March 15, 1897.

Upon a bill in equity for the infringement of letters patent, an answer denying patentable novelty and infringement, a general replication, and proofs taken and completed, the circuit court sustained the defense of want of novelty, and thereupon, on January 3, 1891, entered a final decree dismissing the bill, for want of equity, with costs. Potts v. Creager, 44 Fed. 680.

The plaintiff appealed to this court, which, on January 7, 1895, held that the letters patent were valid, and had been infringed, and therefore, as appeared by its opinion and mandate, reversed the decree of the circuit court, and remanded the cause to that court for further proceedings in conformity with that opinion. 155 U. S. 597, 610, 15 Sup. Ct. 194.

On February 26, 1895, the circuit court entered a decree, 'in conformity with the said mandate,' setting aside its former decree, and adjudging that the letters patent were valid, and had been infringed, referring the cause to a master to take an account of profits, and awarding a perpetual injunction against the defendants. On July 16, 1895, the master filed his report and account of profits.

Before any action of the circuit court upon the master's report, the defedants, on November 29, 1895, filed a petition for a rehearing, for newly-discovered evidence affecting the novelty of the invention; and that court ordered notice to plaintiff to show cause on January 4, 1896, why that petition should not be granted. On that day, the plaintiff objected, in writing, to the consideration of the petition, 'on the grounds that this court is without jurisdiction or authority in the premises; that the issues sought to be amde by said evidence are not properly before it; and that the proceedings are and have been irregular, and not according to law.' But the circuit court, on January 15, 1896, granted the petition for a rehearing, for reasons stated in its opinion reported in 71 Fed. 574, and, after a hearing upon the new evidence, entered an order on, december 21, 1896, by which, the court being of opinion that the letters patent were 'void for want of invention, in view of said new evidence, and that, therefore, the equities are with the defendants, it is ordered that said petition stand as a supplemental answer, and that the replication as filed be considered as a replication thereto.' Its opinion upon entering that order is reported in 77 Fed. 454.

All the decrees and orders of the circuit court above mentioned were made by Judge Sage.

E. W. Bradford and Chester Bradford, for petitioner.

Edward Boyd, for respondent.

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

The general rules which govern cases of this kind are stated, and the decisions by which those rules have been established are collected, in the recent case of In re Sanford Fork & Tool Co., 160 U. S. 247, 16 Sup. Ct. 291, in which this court said: 'When a case has been once decided by this court on appeal, and remanded to the circuit court, whatever was before this court, and disposed of by its decree, is considered as finally settled. The circuit court is bound by the decree as the law of the case, and must carry it into execution, according to the mandate. That court cannot vary it, or examine it for any other purpose than execution, or give any other or further relief, or review it, even for apparent error, upon any matter decided on appeal, or intermeddle with it further than to settle so much as has been remanded. If the circuit court mistakes or misconstrues the decree of this court, and does not give full effect to the mandate, its action may be controlled, either upon a new appeal (if involving a sufficient amount) or by a writ of mandamus to execute the mandante of this court. But the cir- cuit court may consider and decide any matters left open by the mandate of this court, and its decision of such matters can be reviewed by a new appeal only. The opinion delivered by this court at the time of rendering its decree may be consulted to ascertain what was intended by its mandate; and either upon an application for a writ of mandamus, or upon a new appeal, it is for this court to construe its own mandate, and to act accordingly.' 160 U. S. 255, 256, 16 Sup. Ct. 293.

In that case, the circuit court, at a hearing upon exceptions to an answer in equity, had sustained the exceptions, and, the defendant electing to stand by his answer, had entered a final decree for the plaintiffs; and this court, upon appeal, ordered that decree to be reversed, and the cause remanded for further proceedings not inconsistent with its opinion. As the record stood, the only matter which was or could be decided by the circuit court, or by this court on the appeal, was the sufficiency of the answer; and neither the circuit court, nor this court, upon adjudging the answer to be sufficient, could deprive the plaintiffs of the right to file a replication, putting the cause at...