Richmond v. Atwood, 3.

• Decision Date: 27 September 1892
• Docket Number: 3.
• Citation: 52 F. 10
• Parties: RICHMOND v. ATWOOD.
• Court: U.S. Court of Appeals — First Circuit

52 F. 10

RICHMOND v. ATWOOD.

No. 3.

United States Court of Appeals, First Circuit.

September 27, 1892

The 'Act to establish circuit courts of appeals,' printed in 138 U.S. 709, ^[1] provides, in section 6, that 'the circuit courts of appeals established by this act shall exercise appellate jurisdiction to review, by appeal or by writ of error, final decision in the district court and the existing circuit courts,' (in all except certain cases,) and that 'the judgments or decrees of the circuit courts of appeals shall be final * * * in all cases arising under the patent laws. ' Section 7 provides that 'where upon a hearing in equity in a district court, or in an existing circuit court, an injunction shall be granted or continued by an interlocutory order or decree, in a cause 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 or continuing such injunction to the court of appeals.'

This statute (as will be more fully set forth in the considerations upon the statute hereto annexed) provides an appeal from an interlocutory decree of the circuit court granting an injunction and referring the question of damages and profits to a master. Such a decree is made after final hearing upon the pleadings and proofs, and the merits of the cause between the parties are fully determined thereby. If upon appeal the court of appeals, having before it the entire case, is of opinion that the patent is invalid or has not been infringed, the court will follow the practice of the supreme court of the United States in reversing a final decree of the circuit court, and will send a mandate to the circuit court directing that the bill be dismissed. The invariable order of the supreme court in reversing a final decree of the circuit court sustaining a bill for infringement of letters patent is: 'The decree is reversed, and the cause remanded, with a direction to dismiss the bill of complaint, with costs.' See, for example, among the recent cases which show the uniform practice: St. Germain v. Brunswick, 135 U.S 227-231, 10 S.Ct. 822; Yale Lock Manuf'g Co. v Berkshire Nat. Bank, 135 U.S. 342-403, 10 S.Ct. 884; Burt v. Evory, 133 U.S. 349-359, 10 S.Ct. 394; McCormick v. Graham's Adm'r, 129 U.S. 1-19, 9 S.Ct. 213; Brewing Co. v. Gottfried, 128 U.S. 158-170, 9 S.Ct. 83. The mandate sent to the circuit court corresponds to this order. See the papers on file in Evory v. Burt, equity docket of this circuit, case No. 2,753, which shows the form of such a mandate.

It is provided by the act to establish circuit court of appeals, in section 10, that whenever, on appeal, a case coming from a district or circuit court is determined in the circuit court of appeals in a case in which the decision of the circuit court of appeals is final, 'such case shall be remanded to the said district or circuit court for further proceedings, to be there taken in pursuance of such determination. ' Under this section, where an appeal is taken from an interlocutory decree granting an injunction, and it is determined upon the merits by the circuit court of appeals that the patent is invalid, or that there is no infringement, or, in general, that the complainant's bill cannot be sustained, the decree of the circuit court must be reversed, and the cause remanded to that court, with a direction to dismiss the bill of complaint, with costs, following the practice of the supreme court. Inasmuch as the decree of the circuit court granting the injunction was made upon final hearing, and the appellate court decided upon all the pleadings and proofs that the complainant's case fails, it would obviously be insufficient to reverse the decree, only in so far as it grants an injunction, and remand the case to the circuit court, with directions only to enter a decree denying an injunction. The appellate court has decided upon the merits that the bill cannot be sustained, and any action by the circuit court, except to dismiss the bill, would therefore simply be reversed again by the court of appeals.

Reference to the well-established practice in such jurisdiction as allow an appeal from interlocutory decrees or orders, granting injunctions and other relief, shows conclusively that the appellate court, when it has the entire case before it, will dispose of the entire case whenever it can do so, and will instruct the lower court to enter such a decree as will put an end to the controversy. We note the date of each case, as showing how long the practice has been settled.

In New York (prior to the Code) an appeal was allowable from an interlocutory decree or order, and the practice was expressly settled that on an appeal from an interlocutory order the court of appeals would determine finally between the parties, if the merits of the case were fully before it, as will be seen by reference to early New York cases.

Le Guen v. Gouverneur, 1 Johns.Cas. 436, (1800). The chancellor had made an interlocutory order, after the evidence had been taken in a cause, directing an issue to a jury to try the fact of fraud. The highest court of the state, on an appeal from this interlocutory order, decided that a previous judgment at law between the parties was binding, and the bill of complaint was accordingly dismissed. The case was very elaborately argued, and the judges delivered opinions seriatim.

RADCLIFF, J., says, (page 499:) 'I have also no doubt that this court may proceed further, if it appear that the merits are fully in its possession, and determine finally between the parties. That such is the power and frequently the practice of the house of lords in England is evident from the cases which have been cited.'

KENT, J., holds, (page 508:) 'It is the settled rule of the house of lords in England upon appeals always to give such a decree as the court below ought to have given. This is the great and leading maxim in their system of appellate jurisprudence, and instances are accordingly very frequent in which the lords, on appeals from interlocutory orders in chancery, have reversed the order, and decided fully on the merits.'

See, also, LANSING, C.J. page 521. The judges referred to the house of lords cases very fully, and pointed out the idleness of sending back a case for further action by the chancellor, when the entire merits are before the court on appeal. It was accordingly ordered that the interlocutory order should be reversed, and that the bill should be dismissed.

Bush v. Livingston, 2 Caines, Cas. 66 (1805.) This was similarly an appeal from an interlocutory order of the chancellor after the evidence had been taken. The order was reversed, and an order entered disposing of the case. The court referred to the preceding case, and says that the court in that case directed the complainant's bill to be dismissed 'on precedents from the proceedings of the house of lords of England on appeals from chancery, and because the whole merits of the case were before the court. When it is considered that there can be no further proofs in the cause, that the whole merits have been discussed and reviewed, and that it will save litigation and expense, I am myself contented to be bound with the precedent which has been made. ' See, also, to the same effect, Bebee v. Bank, 1 Johns. 529, (1806.)

The same is the practice in the New Jersey court of equity, where an appeal lies from an interlocutory decree granting an injunction. Newark & N.Y.R. Co. v. Mayor, etc., 23 N.J.Eq. 515, (1872.) The court points out, discussing the English and New York cases, that the appellate court will dispose of the entire controversy between the parties: 'The general rule is that the appellate court will render such judgment as the inferior court, under all the circumstances, should have given.'

In England this principle is so well settled that it is not discussed at all in the books, but is found to be the unquestioned practice from the earliest times. Among the early cases in the house of lords, cited by Mr. Chancellor Kent, are the following: Governors, etc., v. Swan, 5 Brown, Parl.Cas. 429, (1760.) Upon an appeal from an interlocutory order of the chancellor, it was 'ordered and adjudged that the decree complained of should be reversed, and that the respondent's bill should be dismissed. ' See, to the same effect, Ellis v. Segrave, 7 Brown, Parl.Cas. 331, (1760;) Bouchier v. Taylor, 4 Brown, Parl.Cas. 708, (1776.)

Similar cases on appeal from interlocutory decrees, where the house of lords reversed the decree and made an order terminating the controversy, remitting the case to the court of chancery to carry out the decree, are as follows: White v. Lightburne, 4 Brown, Parl.Cas. 181, (1722:) Attorney General v. Wall, Id. 665, (1760;) Scribblehill v. Brett, Id. 144, (1703.) Numerous other cases to the same effect can be discovered in the English books. McCan v. O'Ferrall, 8 Clark & F. 30, (1841.)

This decision of the house of lords shows what their well-established practice is. The case came up upon appeal from a complicated decree in Ireland with which the house of lords did not agree. The lord chancellor pointed out that the usual course of the house of lords was 'to declare the principle on which the decree is to be founded, and to refer it back to the court to carry it into execution. ' But he pointed out that sometimes mistakes were made by the lower courts in complicated cases. 'I think it more expedient and more calculated to save expense to the parties that this house in making its order should frame the decree in such a manner as to prevent the necessity of any further reference to the court below. ' Accordingly the house of lords made a very long order, declaring to what...