Lockwood v. Wickes

• Decision Date: 02 December 1895
• Docket Number: 627.
• Citation: 75 F. 118
• Parties: LOCKWOOD et al. v. WICKES et al.
• Court: U.S. Court of Appeals — Eighth Circuit

75 F. 118

LOCKWOOD et al. v. WICKES et al.

No. 627.

United States Court of Appeals, Eighth Circuit.

December 2, 1895

Robert H. Parkinson and P. H. Gunckel, for appellants.

C. K Offield and Chas. C. Linthicum (H. S. Towle was with them on the brief), for appellees.

Before CALDWELL, SANBORN, and THAYER, Circuit Judges.

THAYER Circuit Judge.

This was a suit to restrain the infringement of letters patent of the United States, No. 212,526, which were issued on February 18, 1879, to H. D. Wickes and E. N. Wickes, the appellees who were the complainants in the circuit court. The bill of complaint contained the usual prayer that the letters patent might be decreed to be valid, and that the appellants, J. E Lockwood, C. H. Upton, and N. Nyberg, who were the defendants in the circuit court, be perpetually enjoined from infringing the same, and for such further equitable relief as might be deemed meet and proper. An answer and replication were filed, proofs were taken, and the case was regularly submitted to the circuit court for final decision. No application was made at any stage of the proceedings for an injunction pending the suit, and no such injunction was at any time awarded. After the circuit court had announced its determination to enter a decree in favor of the complainants, in accordance with the prayer of the bill, the complainants' solicitors moved the court to enter a decree, prepared by themselves, which, in substance, adjudged that the complainants were the owners of the patent in suit; that the defendants were guilty of infringing the same; that they be required to account for the profits realized by said infringement; that the case be referred to a master to ascertain and report the amount of such profits, and that 'the question of injunction be deferred and reserved until the coming in of the master's report. ' The circuit court denied the aforesaid motion. It thereupon modified the proposed decree by adding thereto a clause that the defendants be perpetually enjoined and restrained from the further infringement of said patent, and, as thus modified, the decree was duly signed and enrolled. The present appeal was taken from such decree before the report of the master had been filed.

The first question to be considered is whether the appeal was properly taken, and whether this court has jurisdiction to entertain the same. It admits of no doubt that the decree from which the appeal was taken was not a final decree from which an appeal will lie, and that the appeal cannot be sustained on that ground. It did not dispose of all the issues in the case, so that nothing remained to be done except to execute the decree. The profits realized by the infringement had neither been reported nor ascertained, and until an account of the profits and damages had been taken, stated, and approved, the trial court retained jurisdiction of the case, and was at liberty to revise or modify its decree. Perkins v. Fourniquet, 6 How. 206, 209. It has always been held that such decrees are not final in such sense that an appeal may be taken therefrom. Barnard v. Gibson, 7 How. 650; Humiston v. Stainthorp, 2 Wall. 106; 10 Sup.Ct. 32, and cases there cited. The right of appeal, however, is predicated on section 7 of the act of February 18, 1895 (28 Stat. 666, c. 96), now reads as follows:

'That where, upon a hearing in equity in a district court or a circuit court, 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 in a case in which an appeal from a final decree may be taken under the provisions of this act to the circuit court of appeals, an appeal may be taken from such interlocutory order or decree granting, continuing, refusing, dissolving, or refusing to dissolve an injunction to the circuit court of appeals: provided, that the appeal must be taken within thirty days from the entry of such order or decree, and it shall take precedence in the appellate court; and the proceedings in other respects in the court below shall not be stayed unless otherwise ordered by that court during the pendency of such appeal. * * * ' It has been generally supposed, or at least there are no decisions to the contrary, that the foregoing section of the act of March 3, 1891, was inserted in the act for the purpose of securing a right of appeal in those cases where, before the hearing of a case on the merits, an application for a preliminary injunction is either granted or refused, and in those cases where a preliminary injunction is dissolved, in advance of a trial upon the merits, by some interlocutory order. It may be conceded that the statute is broad enough in its terms to confer a right of appeal in every case where an injunction is granted, refused, or dissolved by an order or decree that is, in its nature, interlocutory; but it can hardly be presumed that it was the intention of congress to permit two appeals from a decree rendered after the trial of a case on its merits, merely because a portion of the relief consists in granting, continuing, refusing, or dissolving an injunction. If the statute is construed in its broadest sense, and is held to confer a right of appeal whenever an injunction is granted, continued, or refused, then it may frequently happen that an appellate court will be called upon to hear and decide three or more appeals in the same case, which involve substantially the same question or questions. For example, an appeal may be taken when the trial court grants a temporary injunction, an appeal may be taken when the temporary injunction thus granted is continued or made perpetual by an interlocutory decree rendered after a trial upon the merits, and a further appeal may be prosecuted on the coming in of the master's report when the interlocutory decree is made final. We can hardly suppose that it was the purpose of congress to thus enlarge the right of appeal and increase litigation and make it more burdensome and expensive. It seems more reasonable to believe that section 7 of the act of March 3, 1891, supra, was intended to confer the right of appeal in those cases only where, prior to a hearing on the merits, an injunction is granted, continued, refused, or dissolved, and that an injunction granted after a trial upon the merits, by a decree that is intended to settle the rights of the parties, is not within the provisions of the statute, but is governed by the old rule that an appeal from such a decree can only be prosecuted after it becomes final.

But, even if the appeal in the present case was authorized by section 7 of the act of March 3, 1891, supra, there is another reason we think why it ought not to be sustained. Complainants did not ask the circuit court to award an injunction, but such relief appears to have been granted at the instance of the defendants. The record recites, in substance, that the cause came on to be heard upon the complainants' motion to enter a decree herein in accordance with the form proposed by the complainants, and was argued by counsel, and that the court, upon consideration thereof, denied said motion, for the reason that the granting of the decree in the form proposed, without the allowance of an injunction, would defeat the defendants' right of appeal. From this we must infer that the defendants objected to the proposed decree, and insisted that an injunction should be awarded for the purpose of giving them an immediate right of appeal pending the hearing before the master. And as the only question which arises on the present appeal concerns the right to an injunction, such action on the part of the appellants places them in the attitude of complaining of an order that was made at their instance.

On the state of facts disclosed by the present record, we know of no sufficient reason why the complainants should not have been permitted to relinquish their right to an injunction, even though such waiver would have operated to defeat an appeal until the decree was made final by the filing and approval of the master's report. As the patent was issued in February, 1879, it had only a few months to run when the...