Columbus Watch Co. v. Robbins

• Decision Date: 10 October 1892
• Docket Number: 46.
• Citation: 52 F. 337
• Parties: COLUMBUS WATCH CO. et al. v. ROBBINS et al.
• Court: U.S. Court of Appeals — Sixth Circuit

52 F. 337

COLUMBUS WATCH CO. et al. v. ROBBINS et al.

No. 46.

United States Circuit Court of Appeals, Sixth Circuit.

October 10, 1892

Appeal from the Circuit Court of the United States for the Eastern Division of the Southern District of Ohio.

On application of the parties to have this court, under the appeal from an interlocutory order of the lower court granting an injunction, hear and finally determine the merits of the controversy relating to the validity of the patent in suit and the infringement of same.

James Watson and M. D. Leggett, for plaintiffs.

Lysander Hill and Geo. S. Prindle, for defendants.

Before JACKSON and TAFT, Circuit Judges, and HAMMOND, District Judge.

JACKSON Circuit Judge.

The appellees, as assignees and exclusive owners of reissued letters patent No. 10,631, dated August 4, 1885, for improvements in stem-winding watches, brought this suit in the ordinary form against appellants for the infringement thereof. On the hearing of the cause upon the pleadings proofs, exhibits, etc., the circuit court sustained the validity of the original and reissued patents, adjudged that defendants had infringed certain claims of the reissue ordered the usual account as to damages and profits, and granted an injunction restraining them, their officers and agents, from making, selling, or using watches or watch movements embracing and embodying the invention or improvements described in and covered by the claims of the reissue which were held to be infringed. See 50 F. 545. This decree was passed in May, 1892. The defendants filed an assignment of errors, and prayed an appeal from the entire decree, and for a supersedeas of the injunction. The circuit court allowed an appeal from so much of its said decree as granted the injunction, but denied it as to the balance of the decree; the order of the court upon the prayer for appeal being as follows:

‘ And now upon the filing of the assignment of errors and petition for appeal of the defendants by their solicitors for an appeal in said cause to the United States circuit court of appeals for the sixth circuit, and for a supersedeas of the injunction granted in said cause, the court refuses the appeal as prayed, being of the opinion that such an appeal can be taken only from a final decree, but allows an appeal from so much of the decree, the same being interlocutory, as grants an injunction against the defendants, on condition that appellants (defendants) file an appeal bond for ten thousand dollars herein, within ten days, conditioned as required by law, with security to be approved by one of the judges of this court.‘

Under and in pursuance of this allowance of appeal, the defendants on the same day, June 1, 1892, filed the required bond for superseding the injunction, which bond recited that ‘ an appeal has been allowed from so much of said decree as grants an injunction against the defendants, and a supersedeas of said injunction granted.‘ The appellants having perfected their appeal from so much of the decree below as granted the injunction, a full and complete transcript of the record has been filed and the case docketed in this court. The appellants and appellees now make application to this court to hear and finally determine the entire cause upon its merits,- that is, to finally decide and adjudicate the matters of controversy touching the validity of the reissue patent and the question of its infringement,- to the end that the delay and expense incident to taking of the account of damages and profits directed by the decree below may be obviated should this court adjudge that the circuit court was in error in sustaining the patent and in finding that it had been infringed. This application is rested upon the authority of Richmond v. Atwood, 48 F. 910, 1 C.C.A. 144, (decided by the circuit court of appeals for the first circuit,) and Jones Co. v. Munger Manuf'g Co., 50 F. 785, 1 C.C.A. 668, (decided by the circuit court of appeals for the fifth circuit.) In the latter case the circuit court of appeals for the fifth circuit expressed the opinion that an appeal like the present, under the seventh section of the act of March 3, 1891, invested the appellate court with such jurisdiction over the cause that, if the appellee submitted to its being heard and decided upon its merits, the court had the authority to consider and finally determine the entire controversy. It will, however, be observed that the order in that case, remanding the cause to the circuit court, only directed the injunction to be dissolved and discharged. In Richmond v. Atwood the court went into a consideration of the questions relating to the validity of the patent and its infringement for the purpose of ascertaining whether the injunction was properly or improperly granted, and did not undertake to pronounce any judgment or decree upon the merits, as this court is requested to do in the present case. We entertain no doubt as to the power and duty of this court, under the present appeal, to examine and consider the case presented by the record, for the purpose of determining whether the order of the lower court, granting the injunction, was or was not erroneous. But we find ourselves unable to concur in the opinion expressed by the court in Jones Co. v. Munger Manuf'g Co., that this court can, by the submission or consent of the parties, assume and exercise jurisdiction over the subject-matter of the litigation not covered by the appeal allowed and taken. It admits of no question that the entire decree of the circuit court was not appealable either under the sixth section of the act of March 3, 1891, or under previous provisions of law. Barnard v. Gibson, 7 How. 650; Humiston v. Stainthorp, 2 Wall. 106; Iron Co. v. Martin, 132 U.S. 91, 10 S.Ct. 32. It was not final, but interlocutory, in its character, and subject to the further and future control of the court below, and that court properly denied an appeal from the entire decree, and allowed it only from so much thereof as related to the injunction as authorized by section 7 of the act of March 3, 1891. This limited appeal from a part of the interlocutory decree clearly did not remove the whole case or the entire decree from the circuit court to this court. It only brought up for review the question whether the action or order of the circuit court granting the injunction was proper or improper. This court by virtue of that appeal has before it for determination only the question whether that injunction should be sustained or dissolved. The cause is still pending in the circuit court upon all other questions and matters involved in the litigation. It is well settled that, in respect to all matters and questions not withdrawn by said appeal, and still under...