IN RE NATIONAL ENAMELING & STAMPING CO.
| Decision Date | 19 March 1906 |
| Court | U.S. Supreme Court |
PETITION FOR WRIT OF MANDAMUS
Plaintiffs brought suit upon a single patent, in which there were twelve claims. The Circuit Court found that three of the claims were invalid and nine valid, of which five had been infringed, and referred it to a master to report the amount of damages and dismissed the bill as to the claims found invalid and not infringed. Defendants appealed from the decree and plaintiffs also filed cross-appeal assigning as errors the rulings adverse to them. The circuit court of appeals dismissed the cross-appeal. Petition for mandamus to compel that court to take jurisdiction of the cross-appeal denied and held that:
The decree was interlocutory, and not final, and in the federal courts, no appeal can as a general rule be taken except from a final decree.
The appeal authorized by § 7 of the Act of March 3, 1891, does not bring up the cause as a whole; and, unless otherwise specially ordered, the case, except for hearing of the appeal from the interlocutory order, proceeds in the lower court as though no appeal had been taken until final judgment.
Cases in which a bill has been dismissed as to some of the defendants and a separable controversy as to others referred to a master for an accounting, and in which the dismissal has been treated as a final decree, have no application to a case of joint liability, or in which there is only a single defendant.
In March, 1903, the petitioners filed their bill in the Circuit
Court of the United States for the Southern District of New York against the New England Enameling Company to restrain the further infringement by that company of letters patent of the United States, No. 527,361, for improvements in enameling metal ware, and to recover damages for past infringement. After answer and proofs, the case came on for hearing, and on July 8, 1905, a decree was entered, reciting that nine of the twelve claims in the patent were good and valid, that three were invalid and void by reason of the fact that the patentee was not the original or first inventor or discoverer, that five of the nine valid claims had been infringed by the defendant, but the remaining four had not been. As to the claims held invalid and those found to have been not infringed, it was ordered that the bill of complaint be dismissed. As to the remaining five claims -- those held to be infringed -- it was ordered that the plaintiffs recover the gains, profits, savings, and advantages which the defendant had derived by reason of the infringement, and that the case be referred to a master to report the amount thereof, and also that an injunction issue against further infringement. On August 1, 1905, the defendant appealed from said decree to the court of appeals and filed its assignment of errors. On August 8, the plaintiffs also appealed to the circuit court of appeals and assigned as errors the rulings in the decree adverse to them. On January 3, 1906, this cross-appeal of the plaintiffs was dismissed by the court of appeals on the ground that it had no jurisdiction thereof. Thereupon the plaintiffs filed in this Court this petition for a writ of mandamus commanding the judges of the circuit court of appeals to take jurisdiction of said cross-appeal and to dispose of it simultaneously with the appeal of the defendant.
The decree entered by the circuit court was interlocutory, and not final. Barnard v. Gibson, 7 How. 650; Humiston v. Stainthorp, 2 Wall. 106, and cases cited in note; Estey v. Burdett, 109 U. S. 633, 637; McGourkey v. Toledo & Ohio Railway Company, 146 U. S. 536 (); Hohorst v. Hamburg-American Packet Company, 148 U. S. 262; Smith v. Vulcan Iron Works, 165 U. S. 518.
Plaintiffs brought one suit upon a single patent. The findings of the circuit court that three of the twelve claims were invalid and that the remaining nine were valid, but that four of them had not been infringed by the defendant, did not break this one suit into twelve. They were a guide to the master in his ascertainment of the damages, and indicated the scope of the final decree.
In the federal courts, no appeal can, as a general rule, be taken, except from a final decree. As said by Mr. Chief Justice Taney in Forgay v. Conrad, 6 How. 201, 47 U. S. 205:
See also McLish v. Roff, 141 U. S. 661, 665.
In the latter case this was held persuasive against extending the right of review given by § 5 of the Circuit Court of Appeals Act of March 3, 1891, 26 Stat. 826, to other cases than those in which there was a final judgment or decree, although the word "final" is omitted in some of the clauses of the section.
By section 7 of that act, however, an appeal was provided from certain interlocutory orders or decrees. That section has been twice amended. 28 Stat. 666, c. 96; 31 Stat. 660. As it now stands, it reads:
But it was not intended by this section to give to patent or other cases in which interlocutory decrees or orders were made any precedence. It is generally true that it is of importance to litigants that their cases be disposed of promptly, but other cases have the same right to early hearing. And the purpose of Congress in this legislation was that there be an immediate review of the interlocutory proceedings, and not an advancement generally over other litigation.
Petitioners rely mainly on Smith v. Vulcan Iron Works, 165 U. S. 518. In that case, it was held that, when an appeal is taken from an interlocutory order granting or continuing an injunction, the whole of the order is taken up, and the appellate court may (if,...
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