Marden v. Campbell Printing-Press & Manufacturing Co., 126

• Decision Date: 04 May 1895
• Docket Number: 127.,126
• Parties: MARDEN et al. v. CAMPBELL PRINTING-PRESS & MANUFACTURING CO. CAMPBELL PRINTING-PRESS & MANUFACTURING CO. v. MARDEN et al.
• Court: U.S. Court of Appeals — First Circuit

67 F. 809

MARDEN et al. v. CAMPBELL PRINTING-PRESS & MANUFACTURING CO.

CAMPBELL PRINTING-PRESS & MANUFACTURING CO. v. MARDEN et al.

Nos. 126, 127.

United States Court of Appeals, First Circuit.

May 4, 1895

Samuel R. Betts (Frederic H. Betts, on the brief), for George A Marden and another.

Louis W. Southgate (Frederick P. Fish, on the brief), for Campbell Printing-Press & Manuf'g Co.

Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge.

PUTNAM Circuit Judge.

This was a bill by a patentee alleging infringement. After hearing the cause on bill, answer, and proofs, the circuit court entered the usual decree directing a perpetual injunction and an accounting on a portion of the claims contained in the letters patent in suit, and adjudged other claims invalid; and it further determined, as to still other claims that defendants had not infringed them. The decree also stated that certain other claims had been withdrawn from the consideration of the court, and no finding was made touching them. Thereupon the respondents below appealed under the seventh section of the judiciary act of March 3, 1891, which was followed by cross appeals by the complainant below touching the claims with reference to which the circuit court had refused to find in its favor. After the decree in the court below, and simultaneously with the taking of their appeal, defendants below filed a petition for a rehearing setting up the alleged discovery of certain new and essential proofs. The petition, however, was not filed within the 15 days limited by rule 16 of the circuit court, and therefore did not operate to extend the time within which the defendants below could appeal, under the circumstances found to exist by this court in Andrews v. Thum, 12 C.C.A. 77, 64 F. 149.

The defendants in the court below have filed two motions in this court, which we have considered. The first is that the cause be remanded to the circuit court 'for the purpose of a rehearing of the said cause.' having reference undoubtedly to the new matter presented to the circuit court, to which we have referred. This court, however, has no power to remand except for the purpose of giving effect to some judgment of its own. Roemer v. Simon, 91 U.S. 149; Smith v. Weeks, 3 C.C.A. 644, 53 F. 758. This is so essential by fundamental rules of practice that it need only be stated. To remand under any other circumstances would necessarily operate as a dismissal. It is, however, entirely plain that the appeal given by the seventh section of the act referred to is a privilege or option, and in no way affects or diminishes the right to appeal from the final decree; and as the defendants below, on receiving from this court an oral intimation of the views above expressed, elect to dismiss their appeal, without prejudice to their right to take any other appeal which the law may give them, and without prejudice to the questions which may thus be raised, we permit them so to do.

The second motion of the defendants below was to dismiss the cross appeal of the complainant below. The question is whether the complainant below was entitled to take a cross appeal, or to appeal in its own right, from the interlocutory decree. This question not only compels us to examine the statute itself, but also, to a certain extent, to restate the decisions of this court in Richmond v. Atwood, 2 C.C.A. 596, 52 F. 10, and Gamewell Fire Alarm Tel. Co. v. Municipal Signal Co., 9 C.C.A. 450, 61 F. 208. We are unable to see any doubt as to the intent, scope, or effect of these decisions, and yet they seem to have been misunderstood to some extent. From the beginning of the federal judicial system, no appeal was allowed to the supreme court except by analogy to a writ of error; and, as the latter could only go from a final judgment, so the former, by statute, has always been expressly limited to a final decree. This was so in the original judiciary act of 1789, and in the amendatory act of 1803, as re-enacted in sections 691 and 692 of the Revised Statutes. This limitation has been for the most part very strictly construed. Perhaps this has been influenced by the fact of the long delays which would come to a cause by taking it through the supreme court, in the absence of any provision such as is found in the seventh section of the act of March 3, 1891, to the effect that the case may to a certain extent proceed in the lower court, notwithstanding the appeal, and by the desire to prevent this delay from being multiplied by numerous appeals in the same cause. On the other hand, in England, at least so far back as the middle of the eighteenth century, appeals have freely been granted in interlocutory matter, including appeals to the house of lords. This gave rise to delays (Hovey v. McDonald, 109 U.S. 150, 160, 3 Sup.Ct. 136), but far short of those which would occur under the federal judicial system as it has heretofore existed. As a partial offset, however, the English courts, including the house of lords, have been accustomed to use a certain discretion with reference to appeals from interlocutory orders, to the extent of availing themselves of the opportunity of disposing finally of the case against the complainant when it was apparent that the appeal from the interlocutory order brought up so much of the case on his behalf as would enable the appellate court safely to do so. This is illustrated by a very early case: Ellis v. Segrave, 7 Brown, Parl. Cas. 331,344, decided in May, 1760. This was an appeal from an order directing a feigned issue for a jury. As the appeal brought up the complainant's prima facie case, the house of lords was able, not only to reverse the order directing the issue, but also to dismiss the original bill. As shown in Richmond v. Atwood, ubi supra, this is the recognized rule of practice wherever appeals from interlocutory orders are allowed. The great convenience and value of the rule as applied generally, and especially as applicable under the act of March 3, 1891, cannot be questioned.

We have already said that the provisions of the statute allowing appeals from final decrees only had been strictly construed, and yet the complainant below claims that so much of the decree below as adjudged certain claims invalid, or not infringed, was final, and entitled the complainant to appeal, independently of the seventh section of the act of March 3, 1891. On the contrary, the practice has been so continuous for so long a time the other way, and with such universal acquiescence, that this proposition, so far as we know, has never before been made, nor any necessity arisen for its adjudication. This long-continued recognition of the rule ought to be of itself a sufficient answer to the complainant's proposition. There have been exceptional instances where the case below has been severed and appeals allowed from a decree which did not complete the entire case. Forgay v. Conrad, 6 How. 201, and Potter v. Beal (decided by this court) 2 C.C.A. 60, 50 F. 860, were of this exceptional class. In those cases the appeals were allowed ex necessitate rei, as in each case the court below not only severed the matter appealed from, but was proceeding to execution. The general rule, however, is undoubtedly expressed, as to writs of error, in Holcombe v. McCusick, 20 How. 552, 554, as follows:

'It is the settled practice of this court, and the same in the king's bench in England, that the writ will not lie until the whole of the matters in controversy in the suit below are disposed of. The writ itself is conditional, and does not authorize the court below to send up the case unless all the matters between the parties to the record have been determined.'

This statement of the rule was applied to equity appeals in Hohorst v. Packet Co., 148 U.S. 262, 13 Sup.Ct. 590. The settled practice of the supreme court touching appeals and writs of error is such as to prevent the same case reaching it a multiplicity of times, so far as practicable to accomplish this; and, moreover, by the settled modes of proceedings in equity in a cause of this kind, although there may be an interlocutory finding declaring certain claims void and others valid, yet there is only one final decree. It would be contrary to all well-conceived notions to imagine two final decrees in a patent cause of this character. The proposition of the complainant below...