National Brake & Elec. Co. v. Christensen

• Decision Date: 29 April 1919
• Docket Number: 2163.
• Citation: 258 F. 880
• Parties: NATIONAL BRAKE & ELECTRIC CO. v. CHRISTENSEN et al.
• Court: U.S. Court of Appeals — Seventh Circuit

258 F. 880

NATIONAL BRAKE & ELECTRIC CO. v. CHRISTENSEN et al.

No. 2163.

United States Court of Appeals, Seventh Circuit.

April 29, 1919

John S Miller, Edward O. Brown, and Charles A. Brown, all of Chicago, Ill., and Thomas B. Kerr, of New York City, for petitioner.

Joseph B. Cotton, of New York City, Louis Quarles, of Milwaukee Wis., and Wm. R. Rummler, of Chicago, Ill., for respondents.

Before BAKER, MACK, and EVANS, Circuit Judges.

BAKER Circuit Judge.

Respondents sued petitioner in the District Court for the Eastern District of Wisconsin for alleged infringement of patent No 635,280, issued October 17, 1899, to N. A. Christensen, for a combined pump and motor. On issues joined as to the ultimate rights of the parties, the District Court heard and considered all the evidence each side had to offer respecting the ownership, validity, and infringement of the patent, and thereupon adjudged and decreed that respondents were the owners of a valid patent which was being infringed by structures made, used, and sold by petitioner, that petitioner and its agents be enjoined during the life of the patent from making, using, or selling any combined pump and motor embodying the Christensen improvements, and that an accounting before a named master in chancery be had for past infringements. On appeal to this court that decree was affirmed in 1915. 229 F. 564, 144 C.C.A. 24. Ever since our mandate was issued, the cause has been pending in the District Court in Wisconsin on the accounting.

Sometime after the decisions in this circuit, respondents began a suit on the same patent against the Westinghouse Traction Brake Company in the District Court for the Western District of Pennsylvania. That litigation resulted in a decree, entered in 1917, pursuant to the mandate of the Circuit Court of Appeals for the Third Circuit (243 F. 901, 156 C.C.A. 413) holding the patent invalid and dismissing the bill for want of equity.

Thereupon petitioner went into the District Court in Wisconsin, and, on representations that it was entitled to the benefit of the Pennsylvania decree as a privy, asked that the Wisconsin decree be vacated and petitioner be granted leave to amend its answer on the merits by setting up the Pennsylvania decree as res adjudicata. That petition was denied.

And now petitioner comes before us in an original proceeding, asking that we recall our mandate, vacate our decree, find that the Pennsylvania decree is res adjudicata in this case, and thereupon direct the vacation of the Wisconsin decree and the dismissal of the bill on the merits.

On the records of the two cases, which are submitted as constituting all the evidence that bears on this motion, respondents dispute petitioner's contentions as to the identity of subject-matter and parties in the two decrees. But at the threshold lies the question of the nature and effect of the Wisconsin decree, affirmed by this court, and we have stated the case only in that aspect.

A decree may be looked at from the point of view of time, and also from that of essence. The former discloses procedural law, mainly statutory appellate procedure; the latter concerns the right of a party who, for instance, on issues joined respecting title to property and exclusive possession or use, has submitted all his proofs and arguments, afterwards to require the court to ignore its deliberate decree on title and right of possession and to hear again the evidence and arguments on those issues because a supplemental or dependent issue has been reserved for future judicial determination.

If a decree writes 'finis' to the litigation, it certainly merits the term 'final' in time relation. But even in the time relation of procedure, the last judicial action is not always the matter that is reviewed on appeal. If a chancellor entertains a petition for a rehearing (motion for a new trial), his denial of the petition may be the final judicial action in the case, but his decree on the merits as deduced from the evidence and the law is the matter that is reviewed. The effect of the final order in time is to bring forward to the same time the order on the merits. Brockett v. Brockett, 2 How. 238, 11 L.Ed. 251; Aspen Mining Co. v. Billings, 150 U.S. 31, 14 Sup.Ct. 4, 37 L.Ed. 986; Kingman v. Western Mfg. Co., 170 U.S. 675, 18 Sup.Ct. 786, 42 L.Ed. 1192; Chicago G. W. Rld. Co. v. Basham (March 3, 1919), 249 U.S. 164, 39 Sup.Ct. 213, 63 L.Ed. 534.

Federal appellate procedure is wholly statutory. When the statute limited appeals to 'final' decrees, the meaning of 'final' was a matter of statutory construction. It was within the province of the court to declare that a 'final' order was only the one that ends the litigation in the trial court and that the legislative intent was against 'piecemeal' appeals. Barnard v. Gibson, 7 How. 650, 12 L.Ed. 857; Craighead v. Wilson, 18 How. 199, 15 L.Ed. 332; Beebe v. Russell, 19 How. 283, 15 L.Ed. 668; Humiston v. Stainthorp, 2 Wall. 106, 17 L.Ed. 905; Green v. Fisk, 103 U.S. 518, 26 L.Ed. 485; Keystone Co. v. Martin, 132 U.S. 91, 10 Sup.Ct. 32, 33 L.Ed. 275; McGourkey v. Toledo Ry. Co., 146 U.S. 536, 13 Sup.Ct. 170, 36 L.Ed. 1079; Ex parte National Enameling Co., 201 U.S. 156, 26 Sup.Ct. 404, 50 L.Ed. 707; Heike v. United States, 217 U.S. 423, 30 Sup.Ct. 539, 54 L.Ed. 821; Hamilton Shoe Co. v. Wolf Brothers, 240 U.S. 251, 36 Sup.Ct. 269, 60 L.Ed. 629. In many of these cases the point was stressed that the intermediate order or decree sought to be presented for review, regardless of its essence, was not final for the purposes of appeal within the meaning of the statute. In the Heike Case the court observed:

'It is true that in a certain sense an order concerning a controlling question of law made in a case is, as to that question, final. Many interlocutory * * * orders effectually dispose of some matters in controversy, but that is not the test of finality for the purposes of appeal or writ of error.'

If an order that is interlocutory in time effectually disposes of certain issues under the law and the evidence, the effect of the last order that disposes of the remaining issues is the same as the effect of the order denying a motion for a rehearing-- it brings forward to the latter date for the purposes of appeal the intermediate order on the merits, unless there is a special statutory provision for an intermediate appeal from the intermediate order in question.

Even in cases of procedural law, were the only question was when the time for taking an appeal was ripe, the manifest inconveniences and hardships from long postponement of a review of a decree, intermediate in time, but based on a full submission and consideration of the law and the evidence respecting the foundational issues of title and use, led to exceptions in the application of the time rule. In Forgay v. Conrad, 6 How. 201, 12 L.Ed. 404, an assignee in bankruptcy filed a bill to cancel sundry deeds of the bankrupt, to establish the assignee's title and right of possession, and to obtain an accounting of the rents and profits received by the defendants. On a full hearing of the issues of title and right of possession, and of the fact that defendants had been in unlawful possession, the trial court decreed that the complainant was the owner and was entitled at once to exclude the defendants from the property, that the defendants' receipts of rents and profits were unlawful, that the amount thereof be determined in an accounting before a master, and that so much of the bill as related to the accounting be retained for further decree. Plainly the parties were kept in court for determination of an issue within the pleadings. Plainly the decree on title and right of possession was not the 'final' decree in time relation. Plainly, in its essence, that decree was final as to the issues then adjudged, for they 'could not have been afterwards reconsidered or modified except upon a petition for a rehearing'; and the only question was whether an appeal should then be allowed or only after all issues had been finally disposed of in the trial court. In view of the fact that the assignee in bankruptcy might distribute the proceeds of the sale of the property among the creditors before the accounting issue for rents and profits was finally disposed of, the appeal was permitted to stand. In aid of the 'no piecemeal appeals' rule, Mr. Chief Justice Taney condemned the splitting of cases and the rendition of two or more final decrees on the merits and pointed out to the trial courts that after a full hearing of the foundational rights of the parties only an opinion should be given and no executable orders entered until the master's account of profits or damages was in, so that all matters in dispute might be embodied in 'one final decree.' (But the reasons that underlay that attitude have lost their importance by changes in appellate procedure introduced in the act creating the Circuit Courts of Appeals.) Thomson v. Dean, 7 Wall. 342, 19 L.Ed. 94, was a similar case. There also the decree on review finally adjudged title and right of possession, and reserved the matter of accounting for a future decree.

While Forgay v. Conrad and Thomson v. Dean are exceptional cases in the application of the Federal appeals statute then in force they are not exceptional when substantive law is the test. Indeed, throughout the world of *************** jurisprudence, there is unanimity that a decree which, on issues joined, and on submission by the parties and consideration by the court of all the evidence the parties can or choose to adduce and all the law the parties and the court deem applicable, adjudges that the complainant is the owner and entitled to the exclusive possession of property and that the defendant has...