A.D. Howe Mach. Co. v. Dayton

• Decision Date: 28 November 1913
• Docket Number: 1,223.
• Citation: 210 F. 801
• Parties: A. D. HOWE MACH. CO. v. DAYTON, United States District Judge.
• Court: U.S. Court of Appeals — Fourth Circuit

210 F. 801

A. D. HOWE MACH. CO. v. DAYTON, United States District Judge.

No. 1,223.

United States Court of Appeals, Fourth Circuit.

November 28, 1913

H. E Dunlap, of Wheeling, W. Va., for petitioner.

R. J McCarty, of Dayton, Ohio, for respondent.

Before PRITCHARD and WOODS, Circuit Judges, and ROSE, District Judge.

PRITCHARD Circuit Judge.

This is a petition for a writ of mandamus to compel the judge of the District Court for the Northern District of West Virginia to comply with the terms of the decree originally entered in the case of Coffield Motor Washer Co., Complainant, v. A. D. Howe Machine Co., Defendant. That suit was originally instituted in said district for an infringement of reissued letters patent No. 12,719. The matter was submitted on pleadings and proof on the 26th day of July, 1911, and a decree was entered declaring said letters patent valid and infringed by defendant, granting an interlocutory injunction, and also directing a reference to the master for an accounting; from which decree an appeal was taken to this court, wherein the lower court was affirmed on the 9th day of July, 1912 (197 F 541, 117 C.C.A. 37).

It is contended by the petitioner that:

'On the 26th day of September, 1912, there was entered in this cause an order signed by said Alston G. Dayton, Judge, entitled an 'Amendment to Order of Reference,' which, without the authority of this court, whose mandate said decree now is, materially enlarged the mandate by extending its terms to include matters which, as your petitioner is informed and believes, cannot properly be inquired into and ascertained under said mandate, and which cannot be properly considered under the rules governing accountings to ascertain profits and damages as pointed out in the brief in support of this petition, filed herewith.' It is further insisted that the matters called for by the amendment to said order or reference are not matters which can properly be taken into account by the master in assessing the profits and damages to which the complainant may be entitled, and that said amendments are not germane to said decree, and that if a reference is had thereunder that petitioner will be greatly inconvenienced and will suffer irreparable injury.

Petitioner prays that a mandamus issue directed to the district judge of said court to compel him to vacate the said order entered September 26, 1913, and to direct said district judge to instruct the master to proceed with the accounting under the terms of the order of reference contained in the mandate of this court.

That this court has the power by mandamus, when the occasion so requires, to compel the enforcement of its decree and mandate, is well settled. However, in such cases this power will only be exercised when it is made to appear that the court below refuses to perform a duty which is required by the mandate of this court. The writ will be only granted when it appears that the petitioner is without adequate relief.

The Supreme Court of the United States, in Re Blake et al., 175 U.S. 117, 20 Sup.Ct. 42, 44 L.Ed. 94, in referring to this question among other things said:

'The writ of mandamus cannot be issued to compel a judicial tribunal to decide a matter within its discretion in a particular way, or to review its judicial action had in the exercise of legitimate jurisdiction, nor be used to perform the office of an appeal or writ of error. And it only lies, as a general rule, where there is no other adequate remedy. As respects the federal courts, it is well settled that where the mandate leaves nothing to the judgment or discretion of the court below, and that court mistakes or misconstrues the decree or judgment of this court and does not give full effect to the mandate, its action may be controlled, either upon a new appeal or writ of error if involving a sufficient amount, or by writ of mandamus to execute the mandate of this court. City Bank of Ft. Worth v. Hunter, 152 U.S. 512 (14 Sup.Ct. 675, 38 L.Ed. 534); In re Sanford Fork & Tool Co., 160 U.S. 247 (16 Sup.Ct. 291, 40 L.Ed. 414); In re Potts, 166 U.S. 263 (17 Sup.Ct. 520, 41 L.Ed. 994).'

The appeal in the case upon which this motion is founded was taken in pursuance of section 129 of the Judicial Code, which is in the following language:

'Where upon a hearing in equity in a District Court, or by a judge thereof in vacation, an injunction shall be granted, continued, refused, or dissolved by an interlocutory order or decree, or an application to dissolve an injunction shall be refused, or an interlocutory order or decree shall be made appointing a receiver, an appeal may be taken from such interlocutory order or decree granting, continuing, refusing, dissolving, or refusing to dissolve, an injunction, or appointing a receiver, to the Circuit Court of Appeals, notwithstanding an appeal in such case might, upon final decree under the statutes regulating the same, be taken directly to the Supreme Court. * * * '

We find the following reference to the foregoing section in Walker on Patents (3d Ed.) Sec. 644a:

'An appeal from an interlocutory decree which grants, continues, refuses, dissolves or refuses to dissolve an injunction, may be taken to the Circuit Court of Appeals, for the circuit in which that decree was rendered, at any time within thirty days from the entry of the decree. decree which refers to an injunction; and to that end, the Circuit Court of Appeals will decide the question of validity and infringement, and whatever other questions underlie the question of the justice of an injunction. * * * '

In the case of Kilmer Mfg. Co. v. Griswold et al., 67 F. 1017, 15 C.C.A. 161, the Circuit Court of Appeals for the Second Circuit, in referring to this question, said:

'Inasmuch as the decree of the Circuit Court is not final, the only appeal which can be considered is from so much of such decree as grants an injunction.'

In the case of Metallic Extraction Co. v. Brown, 104 F. 345, 43 C.C.A. 568, the Circuit Court of Appeals for the Eighth Circuit said:

'It is urged finally in behalf of the appellant that the decree which was entered by the lower court must, in any event, be modified so as to exempt it from an accounting for damages resulting from the infringement, because the appellee did not allege in his bill or tender any evidence that he

...