Opposition Brief — Ex Parte National Enameling and Stamping Company

Supreme Court brief1906

Ask Donna

What actually matters in this document.

Text

Supreme Court of the United States.

Ex parte

Tae NaTIONAL ENAMELING AND

Srampinc Company and the

Lavtance & Grosjean Man-

UFACTURING COMPANY.

Original, No. 17.

BRIEF ON BEHALF OF NEW ENG-

LAND ENAMELING COMPANY IN

OPPOSITION TO PETITION FOR

MANDAMUS.

Ths is a petition filed by The National Enameling

and Stamping Co. and the Lalance & Grosjean Manu-

facturing Company, the complainants in a suit brought

in the United States Circuit Court for the Southern

District of New York, for infringement of Patent of

Claus No. 527,361 against the New England Enamel-

ing Co., defendant, for a mandamus commanding the

Judges of the United States Circuit Court of Appeals

for the Second Circuit to reinstate and take jurisdic-

tion over a cross-appeal taken by said petitioners to

the said Circuit.Court of Appeals from so much of the

decree of the Circuit Court as dismissed the Bill of

Complaint as to certain claims of the patent.

On behalf of the New England Enameling Co., and

in support of the order entered by said Circuit Court

of Appeals, we submit that the petition should be

denied.

The suit was brought on Patent No. 527,361, to Hu-

bert Claus (see Exhibit A, annexed to Petition), and

FOULESL, PLP OT Ee

ety, WE te

—

claims 1 to 12, inclusive, were at issue. After hearing

on bill, answer and proofs, an interlocutory decree was

entered finding article claims 4 to 8, inclusive, valid

and infringed ; article claims 1 to 3, inclusive, invalid,

and process claims 9 to 12, inclusive, not infringed.

The decree, which is printed at page 23 of the motion

papers, is the usual interlocutory decree in patent

causes, granting a perpetual injunction and an account-

ing as to claims 4 to 8, inclusive, and dismissing the

bill as to the remaining claims.

Defendant appealed under section 7 of the Judiciary

Act of 1891, as amended in 1900, from so much of the

decree as related to claims 4 to 8, inclusive (See As-

signment of Errors, p. 10 of motion papers). There-

after complainants appealed, praying that the decree

be reversed as to claims 1, 2, 3, 9, 10, 11,12, and that

an injunction and an accounting be granted as to the

same (See Motion Papers, pp. 14-17).

The Court of Appeals for the Second Circuit, on mo-

tion of defendant, dismissed the cross appeal of the

complainants on the ground that it had no jurisdiction

to entertain it. Thereafter the complainants petitioned

this Court and obtained from it a rule on the Judges of

the Court of Appeals for the Second Circuit to show

cause why a writ of mandamus should not be issued,

directing them to reinstate and take jurisdiction of

complainants’ appeal.

We contend :

First. That Section 7 of the Judiciary Act ot 1891,

as amended in 1890, is not ambiguous but clearly

means that an appeal will lie only by the defendant

who has been enjoined by an interlocutory order or

decree, and for the purpose of determining whether

the injunction was properly granted.

Seconp. That in the case of Smith vs. Vulcan Iron

Works, 165 U. S., 518, the question whether a com-

plainant could take a cross-appeal did not arise. That

case is not in conflict with the decisions of the Circuit

Courts of Appeals denying the right of a complainant

to a cross-appeal. It considered only the extent of

the relief that could be given to a defendant when

improperly enjoined.

Tarnp. That the history of this legislation and of

the times shows that it was the intention of Congress

to give the right of appeal to the defendant but to

deny it to the complainant.

Fourrn. That the argument of “ convenience " ad-

vanced by the petitioners is wide of the mark. The

question in issue is the construction of the statute.

Firrs. That if the statute is ambiguous, it will be

strictly construed against any right of appeal in the

complainants, (1) because the original Statnte of 1891

was uniformly construed in this way, and Congress

must be held to have adopted this construction by

re-enacting that Jaw without change, (2) because the

contemporaneous construction was against such right

of appeal, (3) because the construction contended for

by the petitioners would reverse a long-established

practice and system, and would result in absurdity,

and (4) because the intent of Congress is unmistakable

and must control, even if it were against the literal

meaning of the statute.

Sixt. That the decree in question is not a final

decree from which an appeal lies by the complainants

under Section 6 of the said act, but is an interlocutory

decree under the uniform decisions of this Court.

Section 7 of the Judiciary Act of 1891,

as amended in 1890, is not ambiguous but

clearly means that an appeal will lie only

by the defendant who has been enjoined

by an interlocutory order or decree, and

for the purpose of determining whether

the injunction was properly granted.

Our position is that no appeal from the decree

herein can be entertained ander Section * of the Judici-

ary Act of 1891 as amended in 1900, except an appeal

taken by the party against whom the injunction op...

ates in order to obtain speedy relief from the inyune-

tion if it was improperly granted.

if on such an appeal the issue or question which is

raised by the appeal is determined favorably to the

defendant, the Court can give the defendant the full

relief necessarily flowing from such decision, even to

the extent of dismissing the bill, but the Court cannot

take jurisdiction of other issues or questions not in-

volved in determining the propriety of the injunction.

In the judiciary act of 1891, section 6 gave jurisdic-

tion to the courts of appeals of appeals from final de-

ci ‘ons; section 7 provided for appeals from “ inter-

locutory orders or decrees.” The latter section was as

follows (Stat. 1889-91, Ch. 517, p. 828) :

“ Sec. 7. 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 Ap-

peals, an appeal may be taken from such interlocu-

tory order or decree granting or continuing such in-

junction 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.”

In 1895 this section of the act was amended by

Chapter 96 of the Statutes of 1895 to enlarge the right

of appeal so as to read as follows (Stat. 1893-1895,

p. 666) :

“ That where, upon a hearing in equity in a dis-

trict court or a circuit court, an injunction shall be

granted, continued, refused, or dissolved by an in-

terlocutory order or decree, or an application to dis-

solve 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, con-

tinuing, 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 ;

and provided further, that the court below may, in

its discretion, require as a condition of the appeal,

an additional injunction bond.”

—e

ee a ae re

In 1900, by Chapter 803 of the Siatutes of that year,

this section of the Act ct 1891 was again amended to

read as follows (Stat. 1899-1901, p. 600) :

“Sec. 7. That where, upon a hearing in equity,

in a district court or in a circuit court, or bya

judge thereof in vacation, an injunction shall be

granted or continued or a receiver appointed, by an

LA EE EEN EINE I Eee LOE i ee ee

FFs

ipl

ite

Appeals, an appeal may be taken from anch

loentory order or deevee granting or continuing

injunction, ot appointing such receiver to the

cuit Court of Appeals: Provided, that the

muat be taken within thirty days from the

of such order or decree, and it shall take

dence in the Appellate Court; and the

ings in other reepects in the court below shall

be stayed, unloss otherwise ordered by that court,

or by the appellate court or a judge thereof, dar-

ing the pendency of such appeal: Provided far-

ther, that the court below may in its discretion re-

quire as « condition of the appeal, an additional

bond.”

No reference was made in the Act of 1900 to the Act

of 1895, the latter being necessarily repealed by the

amendment in 1900 of the Act of 1891.

So far as the prosent issue ix concerned, Section 7,

as enacted in 1891, is identical with that section as

amended in 1900. Exactly the same words are used

in those portions of the act that need be constraed on

this motion. The decisions of the Courts as to the

construction of the original act on the question now

rained are, therefore, directly applicable to the act as

now existing, More than that; the intention of Con-

gress in 1900 to give to the act the same moaning as to

the question now at issue that the Courts had ani-

formly given to the original act, is conclusively shown

by the use of the exact language contained in the orig-

inal act,

Under the judiciary act as originally enacted the

exact question now before this Court had been

apoo by the Courts of Appeals for the First aed Second

Circuits, whose decisions were uniformly to the effect

that the Court had no jurisdiction to entertain an ap-

me _* —wrer &~

7o_—_—_— a

peal by complainant from such portions of an inter-

locutory decree as dinmiased the bill.

Marden vs. Cam (o., 67 Fed. , 8,

say “rn Rep.

Kilmer Co. ve. Grinwold, Gi Fed. Rep.

1017, Second Cirenit.

Lock Co. va. Corbin, A Fed. Rep.

, Second Cirenit,

In Marden Mig. Co. vs. Campbell Co., 67

Fed. Rep., 809, the situation was identical with that at

bar, ead was heard on motion of defendant to dismiss

the cross-appeal of complainant. The Court of Ap-

peals for the First Circuit considered the statate, and

the reasons for its enactment, fally, holding that the

purpose was only to permit a defendant to obtain «

speedy appeal when under injunction. It was also

contended in that case

“ that so much of the decree below as adjudged

certain claims invalid, or not infringed, was final

and entitled the complainant to appeal, independ-

ently of the seventh section of the act of March ;

5, 1891."

The Court said:

“ On the contrary, the practice has been so con-

tinuous forse long a time the other way, and with

sach universal acquiescence, that this proposition,

so far as we know, was never before been made,

nor any necessity arisen for its adjudication.”

Ion Kilmer Manufacturing Co. va. Gris-

wold, 67 Fed. Rep., 1017, decided April 23, 1595,

two patents were sued apon.

The lower Court held one patent invalid and dis- '

missed the bill as to it, and sustained the other patent

and awarded an injunction and accounting thereunder.

Both parties appealed from this “ interlocutory de-

eres.” The Circuit Court of Appeals for the Second

Cirouit said :

“Inasmuch as the decree of the Circuit Court

is not final, the only appeal which can be con-

sidered is from so much of such decree as grants an

Apparently the defendant had not moved to dismixs

the complainant's appeal; but the Court of its own

motion refused to entertain or consider it.

In Eagle Lock Co. vs. Corbin Cabinet Look

Co., 64 Fed. Rep., 789, the same situation was present

and the same holding was made by the Court of Ap-

peals for the Second Cirenit. The Court anid:

“ The cireuit court for the district of Connecticut,

upon ‘final hearing’ of the cause, diemiased the

bill as to letters patent No. 285,916, .0d as to

claim 1 of No. 337,187, and directed an injunction

and an accounting as to the second claim of the

later patent (52 Fed., 980). From that part of the

interlocutory decree which related to the second

claim, this appeal was taken by the defendant.

As infringement is practically admitted, the val-

idity of this claim is the only question before this

court. The correctness of the other conclusions

of the circuit court has not been considered, as

the decree was not « final one.”

Under the act as amended in 1990, the following de-

cisions were rendered on exactly the «ame question and

to the same effect.

National Co. ca. Automatic Co., 106 Fed.

Rep., 670, Firet Cirewit,

Thomeon-Hoxston os. Naveau Uo, 112 Fed.

Rep., 676, Srcond Cirewit,

Western Elec. Co. ve. Abbott, 108 Fed. Rep.,

O68, Sleth Uirewit. a mes aa

vs, Superior Co., .

886, 800, Sixth Circuit.

In National Co. vs. Automatic Co., 105 Fed.

Rep., 670, there was an appeal by the complainant

from so much of an interlocutory decree as refused an

injunction. The Court of Appeals for the First Cir-

a Se —

_->--~~

enit dismissed the appeal on the ground of lack of

jariadiction.

In Thomson-Houston Co. ve. Nassau Co.,

112 Fed. Rep. 676, the Court of Appeals for the

Second Circuit dismissed sach a cross-appeal by the

complainant. It appears from the decision in the

Circuit Court, reported at 110 Fed. Rep., 647, 649, that

the decree appealed from was an interlocutory decree

holding six claims valid and infringed, five claims not

infringed, and two other claims invalid.

In Western Electric Co. vs. Abbott, 105 Fed.

Rep., 953, the decree

“ dismissed the bill as to the first claim of the

patent as being merely for a function, sustained

the other two claims,—2nd and 3rd,—and found

that the defendant had infringed the same.”

7 _— orm

In this case the Court of Appeals for the Sixth Cir-

cuit overruled the contention that the amendment of

1900 did not operate to repeal the amendment of 1895,

and also overruled the contention

“that, as the decree finally disposes of the first

claim of the patent, an appeal would lie independ-

ently of the statute,”

saying,

“ Bat as that part of the decree did not fnally

dispose of the whole case, which was retained for

the purpose of an accounting upon the claims held

valid, the right to appeal from the dismissal of the

bill as to the first claim would be suspended until

the final decree, when that action and any other

which might be prejudicial could be brought up

on one appeal. The other course would sanction

the bringing up of a caze ‘ piecemeal.’ In thus

holding we are in agreement with the opinion of

the Cireuit Court of Appeals for the First Circuit

in Marden va. Printing Press Co., 15 C. C. A., 26;

53 U. 8S. App., 123, 67 Fed., 809."

SAS

Seton use

Fede. WESSON

eit SP eS

Gola ataley S

or. Retin

Cases construing the statute in the same way, but

relating specifically to appeals from interlocutory orders

rather than decrees are

Westinghouse vs. Christensen, 104 Fed.

Rep., 622, Second Circuit.

Wire Co. vs Boyce, 104 Fed. Rep., 172,

Seventh Circuit.

Frye & Bruhn vs. Carstens, 130 Fed. Rep.,

766, Nenth Cireuit.

A case holding that where an appeal from an inter-

locutory decree under the act as amended in 1895 was

properly before the Court, and it was decided that the

injuoction was properly granted, the Court was not

called upon to decide whether under the peculiar

circumstances of the case, an accounting should have

been denied, is

Metallic Extraction Co. vs. Brown, 104 Fed.

Rep., 345, 354, Lighth Circuit.

The only case in which such a cross-appeal as that

now before the Court has been entertained by a Court

of Appeals, is

Chicago Co. vs. Miller Co., 133 Fed. Rep.,

541, Seventh Circuit.

It is said by the petitioners that in the Fourth Cir-

cuit, the same conclusion was reached in

Scriven vs. North, 134 Fed. Rep., 366,

Fourth Cireuit.

This, however, is an error. The latter case allowed

an appeal, independently of Sec. 7, because the decree

was stated to be unusual and within the doctrine of

Forgay vs. Conrad, 6 How., 201. The reasoning of the

Court in the Scriven case is opposed to the petitioners’

position here.

Thus, the Courts of Appeals of the First, Second

and Sixth Circuits, have uniformly adopted the con-

struction we contend for. In the Eighth Circuit,

though the exact question has not been considered, a

RPP LIE ELE Ae Me A LOO PBS RSA AT

ee RPOEN UAE PL Tot DN SCRA

conclusion was reached which necessarily meant tlrat

the Court had adopted the same construction. As

against these, the only conflicting decision is the YAic-

ago vs. Miller case, supra, in the Seventh Circuit.

There has been a line of decisions relating to the

construction of Section 7, but involving the cunsidera-

tion of an entirely distinct question, timely, whether

upon the defendant’s appeal from an interlocutory

order or decree granting an injunction the Court had

power to set aside the accounting and dismiss the bill.

The principal decisions on this particular question are

Smith vs. Vulcan Iron Works, 165 U.S., 518, and the

cases cited therein including Richmond vs. Atwood, 52

Fed. Rep., 10, and Bissell Carpet Sweeper Co. vs.

Goshen Co., 72 Fed. Rep., 545. We will discuss these

cases hereafter, but we desire to call the attention of

the Court at this time to the fact that they do not con-

sider or in any way relate to the question whether or

not a complainant is entitled to a cross-appeal from

the parts of an interlocutory decree dismissing the

bill.

We submit that the decisions of the Courts of Ap-

peals for the four circuits mentioned above, holding

that a complainant is not entitled to such cross-appeal,

are entitled to great weight. The array of authority

is unusually strong. We submit further that their

construction of the statute is the only reasonable and

logical one.

It is well known that Section 7 was inserted in the

Judiciary Act in order to protect defendants upon

whom an improvidently granted injunction operated,

during the long period that might intervene between

the entry of the interlocutory decree and the termina-

tion of the suit with a final decree. Defendants could

be ruined by such an injunction, though ultimately

prevailing, and no adequate remedy existed. In

Barnard vs. Gibson, T How., 650, 658, this Court dis-

cussed this hardship and, with reference to patent

cases, stated that the usual practice should be for the

Circuit Court to suspend the injunction pending the

coming in of the master’s report. However, in most

circuits this method was followed only in exceptional

cases rather than as the general rule of practice.

Section 7, therefore, enlarged the right of appeal by

giving an appeal from “interlocutory orders or de-

crees”’ granting or continuing an injunction. Clearly

the only party who may appeal is the party that is

prejudiced by the granting or continuing of the in-

junction, the party that has been put under the drastic

operation of an injunction thereby. It would be to

read the Act ultra-literally and apart from its obvious

purpose and intent to assume that it intended to

allow either party to appeal from any finding set out

in the order or decree merely because some part of

that decree granted or continued an injunction.

The purpose of the 7th section of the Act of 1891

is very well expressed in the case of Richmond vs.

Atwood, 52 Fed. Rep., 10, 28, where the Court says:

“As already said, we think the term was used

in its broadest sense, and, in our opinion, full

scope should be given to this provision of the

statute, to the end that any party aggrieved by

any order or decree granting an injunction, at any

stage of the proceedings, may have a speedy

remedy by appeal. It is plain that the policy in-

tended to be emphasized by this statutory excep-

tion to the general provision of the statute and the

rule of law, limiting the right of appeal to final

decision, is this: That, as injunction orders de-

prive parties of the possession and control of

property and business, and, in case of error, work

irreparable mischief and great injustice, the party

upon whom the order operates should have an

early opportunity to have the record examined by

the appellate court, and, if error is discovered,

to have it corrected without the delay necessarily

incident to litigation in its various stages before

reaching final judgment.”

Wie Se NS aden a

eh ak POP Na Ee

Eainy eee Wa RARER ha SP

Rae ae TEE

Piscesintonisess - mana

The appeal allowed by section 7 is specifically lim-

ited to an interlocutory order or decree “ granting or

continuing ” an injunctior or appointing a receiver.

What is the meaning of this limitation? It can only

mean that Congress did not intend to extend theright of

appeal tu interlocutory orders or decrees generally, and

was not seeking to give any remedy or relief to a com-

plainant under this section, but was extending relief

only to a party who was under injunction and whose

property interests were thus threatened with destruc-

tion. The only ground for including interlocutory

decrees granting or continuing an injunction or ap-

pointing a receiver, and excluding all interlocutory de-

crees of other kinds, would be because Congress was

of the opinion that the issuance of an injunction or the

appointment of a receiver was a peculiar hardship or

injury calling forthe right of immediate appeal, whereas

the other provisions of an interlocutory decree, such

as those dismissing the bill as to some of the claims of

a patent, did not create such a condition of hardship

or injury as to require in justice an appeal at that

stage of the cause. The petitioners admit in their

brief filed with the petition, that the complainants

would have no right of appeal of their own initiative.

They say (p. 8 of Brief for Petitioners) :

“ Petitioners may well concede that they can-

not on their own initiative create the status on

which depends the jurisdiction referred to. It

might, indeed, violate established precedent to

permit complainants, by appealing independently

and in the first instance, from unacceptable parts

of an interlocutory decree ‘to try the case piece-

meal.’ ”

The petitioners therefore admit that it was not the

purpose of Congress, and it is not the meaning of this

section, that any independent and unconditional right

of appeal is conferred upon the complainants. They

claim that the complainants have the right of appeal

because the defendant first appealed. We submit that

there is nothing conditional about the language of

1 RI LOTR ABI ES, CRN eee |

D q

" is

‘d

gta

ees F

ee aii Ge eieWAtS fh

Section 7. Whatever right of appeal it confers upon

either party must be absolute and independent of the

right of appeal of the other party or the action of the

other party. This admission or concession of the pe-

titioners is fatal to their contention that the complain-

ants have a right of appeal under this section.

It is important to note that the act places “ orders”

and “decrees” on the same footing, so that the con-

struction to be given to the act must be one having

equal application to both. The distinction between

an “ interlocutory order” and an “ interlocutory de-

cree” is well understood, and Congress must be pre-

sumed to have understood the distinction (Bissell vs.

Goschen, 72 Fed. Rep., 545). It will hardly be con-

tended by the petitioners, we think, that where an in-

terlocutory order granting an injunction also granted

other temporary relief, or directed other things to

be done of a preliminary and temporary nature,

the complainant would have the right of ap-

pealing from all of the other parts of

such interlocutory order. Yet if the petitioners’ con-

tention as to the meaning of this section is correct,

the complainant would be entitled to such an appeal

from interlocutory orders just as much as from inter-

locutory decrees, for the statute makes no distinction

between the two.

It is also important to note that Section 7 provides

that the appeal “shall take precedence in the appel-

late court.” Evidently precedence is given only be-

cause the defendant is under an improperly granted

injunction, or because property has been put into the

hands of a receiver, and proceedings are to be speeded

manifestly in order that such injunction or receiver-

ship may be quickly removed or terminated if im-

proper. This provision indicates clearly that this

section was intended to give relief to the defendant

and not to the complainant.

Again Section 7 provides that “an appeal may be

taken,” that is to say, one appeal and no more. This

one appeal is the appeal of the defendant. This argu-

ment is enforced by a comparison of the language of

Section 7 with the language of Section 6 of the same

act, which provides for appeals by one or both parties

from final decrees. Section 6 reads as follows:

“Section 6. That the Circuit Court of Appeals,

established by this Act, shall exercise appellate

jurisdiction to review by appeal or by writ of error,

final decisions in the district court and the ex-

isting circuit courts, &c.”

The Court of Appeals is thus empowered “ to re-

view ” “ final decisions.” This means the whole de-

cree or decision, including the parts that are unfavor-

able to the complainant as well as those that are un-

favorable to the defendant, and necessarily means that

appeals may be taken by either party who is ag-

grieved.

Section 7, on the other hand, is sharply contrasted

with this. It does not provide that the Court shall

have power “ to review” “interlocutory orders or de-

crees granting or continuing an injunction, &c.,” but

its language is strictly limited to the effect that “an

appeal may be taken.” ‘This limitation to one appeal

is consistent with the limitation to an order or decree

granting or continuing an injunction or appointing a

Receiver, and means that there is to be one appeal,

and that by the defendant.

In short, the natural meaning of the act is that an

appeal under Section 7 will lie only against the oper-

ation of an injunction or the appointment of a re-

ceiver, and it must be speedily determined, and _ that,

meanwhile, all other proceedings in the suit continue

in the Court below, unless otherwise ordered, unaf-

fected by the pendency of the appeal taken from the

granting of the injunction or the appointment of a

receiver.

}

a |

SS bE EIS BS ON at SER EL ae Bok

vind RSE

II.

In Smith vs. Vulcan Iron Works the

present question did not arise. That case

is not in conflict with the decisions of the

Circuit Courts of Appeals denying the right

of complainant to a cross-appeal. It con-

sidered only the extent of the relief that

could be given to a defendant improperly

enjoined.

The petitioners’ argument rests almost wholly upon

the decision of this Court in Smith vs. Vulcan Tron

Works, 165 U.8., 518. It is important to consider the

facts which were before the Court in this case, as it

will be seen at once that the question whether a com-

plainant had a right of appeal under Section 7 did not

arise and was not involved either directly or indi-

rectly.

Two cases were before the Court on petitions for

writs of certiorari. In both cases an interlocutory de-

cree had been entered by the Circuit Court adjudging

that the patent was valid and had been infringed, and

granting an injunction and an accounting. In both

cases the decree was wholly favorable to the com-

plainant. The only appeal taken was by the defend-

ant. The complainant did not appeal and had no

reason for appeal because he had obtained all the re-

lief that he asked for and was in no way aggrieved.

The Court of Appeals, in order to determine whether

the defendant had been properly enjoined under the

patent, had to decide whether the claims of the patent

were valid and had been infringed. In the first case

the Court decided these questions in favor of the de-

fendant, and directed not merely that the injunction

should be set aside by the Circuit Court, but that the

bill should be dismissed. In the second case the Court

of Appeals upon re-hearing decided the question of

infringement in favor of the defendant, and in like

manner directed the Circuit Court to dismiss the bill.

The complainants then filed their petitions in this

court for writs of certivrari. These petitions raised

the following question :

When the Court of Appeals has acquired jurisdic-

tion, upon a defendant's appeal under Section 7, of the

issues of validity and infringement of the claims of a

patent, in order to determine the propriety of the in-

junction, and when it has determined either or both of

these issues for the defendant, to what extent can it

grant relief? Has it power only to set aside the in-

junction, or can it give the full relief which must

necessarily follow at some time from its decision on

validity and infringement, that is to say, can it dismiss

the bill ?

The question did not arise in either of these cases

whether the Court could reach out for and take juris-

diction ot other issues having no relation to the in-

junction granted by the lower Court, or of other parts

of the decree not resulting from a determination of

those issues, or whether the Court had jurisdiction to

entertain an appeal by the complainant from other

parts of the decree. The question in Smith vs.

Vulcan Iron Works was as to extent of

remedy, not extent of jurisdiction.

Certain language occurring in the opinion of the

Court is relied upon by the petitioners in support of

their proposition that the complainant has a right of

appeal, but this language, when considered in connec-

tion with the question before the Court, affords no sup-

port for the petitioners’ proposition, On the contrary,

we submit that it is a necessary inference from the

language used by the Court that the right o« appeal

rests in the defendant alone.

The petitioners also rely upon the decision of the

Court of Appeals for the Seventh Circuit in Chicago vs.

Miller, 133 Fed. Rep., 531, but as this latter decision

is based wholly upon the case of Smith vs. Vulcan '

Iron Works, it follows that if no authority is found in

——

the latter case for the petitioners’ contention, the case

of Chicago Co. vs. Miller is without weight.

The principal argument of the petitioners and the

principal basis of the decision of the Court of Appeals

in Chicago Co. vs. Miller, 133 Fed. Rep., 541, is that

under the doctrine of the case of Smith vs. Vulcan

Iron Works, 165 U. S., 518, the taking of an appeal by

defendant under the provisions of Section 7 of the

Judiciary Act brings the decree and the record before

the Appellate Court, and so gives the complainant the

right to file a cross-appeal from such portions of the

decree as found unfavorably to it. The petitioners

admit that they would have no right to appeal under

the terms of Section 7, except when defendant first

appeals.

We do not understand that this Court has announced

any such doctrine in Smith vs. Vulcan Iron Works, or

that there is anything in that opinion from which such

a doctrine can properly be deduced. We understand

the doctrine of Smith vs. Vulcan Iron Works to be

that where an appeal by defendant under Section 7 is

properly before the Court, and the conclusion that the

Court reaches as to the granting of the injunction, is

such as to necessarily involve the dismissal of the bill,

then further expense and delay in the litigation may

be stopped by a mandate to the lower Court to

enter a decree dismissing the bill. The doctrine of

Sriith vs. Valean Iron Works simply involves the idea

that when the Appellate Court has been obliged on

defendant's appeal to reach a certain definite conclu-

sion on the issues raised by the appeal, then the de-

cree that should necessarily follow that conclusion

should be entered by the lower Court. The petitioners

extend that doctrine to apply to a case where the Ap-

pellate Court would be obliged to consider other issues

brought up on a separate appeal, and to adopt addi-

tional conclusions.

Our understanding of Smith vs. Vulean Iron Works

is in accord with the decisions of the Courts of Appeals

of the First and Second Circuits on the very point now

ROM” TEE NS RR OE, POT 8 Aa WE DO Le wna ee

eM) Pigiy sere pate NOSE I IRR EE TINE EO

at issue, made prior to the decision of Smith vs. Vul-

can, and specifically approved in that opinion, The

understanding of Smith vs. Vulcan Iron Works ex-

pressed by the petitioners is concededly in direct

opposition to these cases that were cited with approval

in Smith vs. Vulcan Iron Works. Prior to the latter

decision, the question had arisen in many of the Cir-

cuits whether the Appellate Court, in reviewing a de-

cision under Section 7 of the Judiciary Act, must limit

its mandate to the reversal of that part of the decree

ordering the injunction, or whether having found that

the injunction should not issue because there was no

equity in the bill, the mandate could order the entry of

a decree dismissing the bill. While there had been

some variance in the decisions of the different

Circuits, yet all of the Circuits that had passed upon

this point had finally reached the same conclusion—-

namely, that where an appeal had been taken from a

decree granting an injunction, the Appellate Court

should order such a decree as would be in accordance

with the conclusion that had been reached upon the

issues presented, dismissing the bill if it was without

equity.

Mr. Justice Gray, writing the opinion in Smith vs.

Vulcan Iron Works, stated the questions presented in

the following language :

“The questions presented by each of these

cases are whether, in a suit in equity for the in-

fringement of a patent, an appeal to the circuit

court of appeals from an interlocutory order or

decree of the circuit court, granting an injunction,

and referring the case to a master to take an ac-

count of damages and profits, may be from the

whole order or decree, or must be restricted to

that part of it which grants the injunction ; and

whether the circuit court of appeals, upon such an

appeal, may consider and decide the merits of the

case, and, if it decides them in the defendant's

favor, may order the bill to be dismissed.”

EE EF ES) LEIP NT PNGTI IEEE

. >

Then after stating that there had been some di-

versity among the Circuit Courts of Appeals and refer-

ring to some of the earlier cases, the learned Justice

said:

* But in the first circuit, the power of the circuit

court of appeals, upon such an appeal, to con-

sider the morits of the case, and to order the bill

to be dismissed, was maintained, after thorough

discussion of the subject on principle and author-

ity, inan opinion delivered by Judge Atonica

Richmond vy. Atwood (September, 1492), 5 U. 8.

App., 161,

“ This view has since prevailed, not only in the

first cireuit: Marden v, Campbell Printing Press &

Mfg. Co. (May, 1895), 33 U. 8. App., 123, &e.,”

(citing a long line of cases in different circuits).

He also cited the case of Kilmer Mfg. Co. va. Gris-

wold, 67 Fed, Rep., 107.

The position of the petitioners and the decision of

the Court in the Seventh Circuit in Chicago Co, vs.

Miller Co., are both based upon the ground that the

decision of Smith va, Valcan Iron Works established

principles that were opposed to the decisions of the

Courts for the First and Second Circuits in the two

cases above cited. Yet Mr. Justice Gray cited them

as being in accord with the principles he was onunci-

ating for this Court.

In Richmond va, Atwood, cited by Judge Gnay, the

exact situation before the Court in Smith va. Vulcan

Iron Works was presented, and precisely the same find-

ing was made, The case of Marden vs, Campbell, also

cited by Judge Guay, was exclusively directed to a dis-

cussion of the exact question now at issue and coupled

its discussion with an explanation of the case of

Richmond vs, Atwood, and a statement that it had

been misunderstood, saying :

“Under the circumstances of Richmond vy.

Atwood the injunction covers the entire case, and

thus an appeal from the injunction brings up the

EES pO TPS a? oe” ot Fe eget Ce Orel rss Ot.

eS”

whole decree, and necessarily the whole record,

#0 that the court ia required, for the mere purpose

of adjudicating, touching the injunction, to examine

on appeal the entire case; and so no detriment to

the coart or the parties can come by its thereupon

disposing of the merits, and entering orders to the

circuit court analogous to those entered upon an

from a final decree. This, however, is ¢

very different thing from reaching out for parts of

the record, and of the decree below, not covered by

the injunction order.”

Exactly as the case of Richmond vs, Atwood wax

misunderstood prior to the decision of Marden va.

Campbell, so has the decision of Smith va. Valean Iron

Works been misunderstood by the Court of Appeals

for the Seventh Circuit and by the petitioners. In

view, however, of the fact that in the decision of this

Court the two cases of Richmond vs. Atwood and

Marden vs. Campbell were cited together, we under-

stand that this Court intended to indicate that it ap-

proved the decision in the Marden case.

But the language of Smith va, Valean Iron Works

is, we submit, entirely clear and unambiguous. The

Court in the plainest terms defined the purpose of Sec.

7 of the Judiciary Act as follows :

“The manifest intention of this provision, read

in the light of the previous practice in the courts

of the United States, cwtrasted with the practice

in courts of equity of the highest authority else-

where, appears to this court to have been, not only

to permit the defendant to obtain immediate relief

Srom an injunction, the continuance of which

throughout the progress of the cause might

seriously affect his interests, but also to save both

partios from the expense of further litigation,

should the appellate court be of opinion that the

plaintiff was not entitled to an injunction because

his bill had no equity to support it.”

We submit that there is no warrant here for the con-

tention that the appellate court may, under the pro-

visions of See. 7, give a complainant an enlarged decree

by taking jurisdiction of issues other than those in-

volved in the granting of the injunction below. The

petitioners’ contention necessarily assumes that this

Court failed to use sufficient perspicuity in the closing

phrase of the quoted sentence, and really intended to

say that the purpose of the act was not only to relieve

the defendant from the effect of an improperly granted

injunction,

but also to decide all matters that were at issue in

the case below, and order a decree in conformity

therewith.

We believe we can safely assume that this Court

meant exactly what was said, and that it advisedly

employed the language it did in order that it should

not be misunderstood as covering the situation now

present, and present in MarYen vs. Campbell, supra.

The case of Chicago Co. vs, I&ier Co. is, we submit,

one that shows a failure to grasp the whole situation

and logically apply to the language of Sec. 7 the doc-

trine of Smith vs. Valean Iron Works and the settled

priaciples and terms of our jurispradence, It

confuses the terms interlocutory order and inter-

locutory decree, and in effect says that the act,

although treating interlocutory orders and decrees

alike, confers wider jurisdiction in the case of

interlocutory decrees than in the case of interlocutory

orders. It also confases interlocutory decrees and

final decrees and seems to consider that if it can find

an approach toward finality about the deczee before it,

it can apply Section 7 of the act more broadly than it

otherwise could. It erroneously allowed an appeal

to defendant on a patent that had expired and upon

which an injunction had, therefore, not been allowed

and seemed to think that the entertaining of this

appeal would more or less justify the entertaining of

complainant's cross-appeal.

Thus in Chicago Co, vs. Miller the Court says :

“ A decree of this character in a patent suit is

customarily called interlocutory. If it were in

trath final, as was the decree in the land suit of

Forgay vs. Conrad, 6 How,, 201° 12 L. Ed., 404,

complainant's right to a cross-appeal could not be

successfully questioned. If it were in trath inter-

locatory ia the sense and to the extent that the

decree awarding the temporary injunction was

interlocutory, complainant's lack of right to a

cross-appeal would be indisputable.”

But the decree in Forgay vs. Conrad was anid by

this Court to be, strictly speaking, an interlocutory

one, An appeal was allowed only because the decree

ordered the actual delivery of property and awarded

execution therefor. It was, therefore, considered final

for the purpose of appeal. Yet, if the decree in

Chicago Co. va, Miller Co, were in truth final, or within

the doctrine of Forgay vs. Conrad, complainant would

not obtain a right of appeal under See. 7, but under

Hee. 6. Lf the decree were interlocutory to the extent

“that the decree awarding the temporary injunction

was interlocutory,” then it wowld not be a decree, bat

a mere interlocutory order. 1, under these circum-

stances, “ complainant's lack of right to a cross-appeal

would be indisputable,” then it must only be because

complainant would have no right under See, 7 of the

Judiciary Act. If complainant has no right under

Sec. 7 to appeal from a portion of an interlocutory

order to which it objects, then it must necessarily

follow that it has no greater right to appeal from an

interlocutory decree, for the Court has no right to pre-

sume that Congress, in employing the terms “ ivter-

locutory orders and deciees,” intended to make a dis-

tinction between interlocutory orders aiid interlocu-

tory decrees, because to do so would be to assume

that Congress, though using both terms in the same

way, intended to provide different rights of appeal

therefrom.

r ~——-

The case of Bissell vs. Goshen, 72 Fed. Rep., 545,

very clearly set ut the well recognized distinctions

between interlocutory orders and interlocutory decrees,

and held that Congress must be presumed to have ap-

preciated the distinction between them when including

both within the provisions of Section 7 of the Judi-

ciary Act.

Chicago Co. vs. Miller, in fact, states that ‘rom an

interlocutory order granting an injunction the defend-

ant only can appeal, whereas if it be an interlocutory

decree the complainant may also appeal from that por-

tion of the decree that denies an injunction. This

means that by construction the Court has added a

proviso to the act to make it distinguish between inter-

locutory orders and interlocutory decrees.

In making this distinction between interlocutory

orders and interlocutory decrees, and applying the sup-

posed doctrine of Smith vs. Vulcan Iron Works to in-

terlocutory decrees only, the Court in Chicago Co. vs.

Miller has also overlooked the fact that this Court has

made no distinction in applying the doctrine of Smith

vs. Vulcan Iron Works to interlocutory orders and

interlocutory decrees.

In Mast, Fous & Co. vs. Stover, 177 U. S., 485, 495,

this Court held that upon an appeal by a defendant

from an order granting a preliminary injunction, the

Appellate Court should dismiss the bill on the merits

if it was clear that the bill was without equity. In so

holding this Court referred to and directly applied the

doctrine of Smith vs. Vulcan, the only distinction be-

tween the two cases being that where a preliminary

injunction was appealed from, the Appellate Court,

before dismissing the bill, would necessarily consider

whether its conclusions might be altered by proofs.

If the doctrine of Smith vs. Vulcan then means what

the petitioners contend and what the Court in the

Chicago vs. Miller case held, it necessarily follows that

under Section 7 of the Judiciary Act the complainant

may appeal and obtain an enlarged injunction from an

interlocutory order granting a preliminary injunction.

PAA MEO G RE SY 2 ET ISIS OLE SED SAO LRA BEBE SEBEL OND SES IER SATB ENS OR S o

SiSgus res

Yet the Court in the Chicago vs. Miller case considered

that from such an order “complainant’s lack of right

to cross-appeal would be indisputable.”

Other cases in this court have also applied the

doctrine of Smith vs Vulcan Jron Works to interlocu-

tory orders as distinguished from interlocutory de-

crees. Thus, in Zn re Tampa Suburban Railroad Co.,

168 U. S., 583, this Court, citing the Smith vs. Vulcan

case, states that where an order has been entered

which appoints a receiver and grants an injunction

“the appeal provided for may be taken, and carries

up the entire order, and the case ma;, indeed, on occa-

sion, be considered and decided on its merits.”

This decision interpreted the act as amended in

1895, which did not provide for an appeal from an

order appointing a receiver. It is clear, however, that

in order to pass upon the right of the Circuit Court to

grant the injunction, it was necessary to pass upon the

question of the right of the Court to appoint the re-

ceiver. The sole issue was whether the receiver had

been properly appointed ; for, if he had been, the in-

junction was proper, and, if he had not been, the

injunction was improper. Therefore, the doctrine of

Smith vs. Vulcan was properly applied in the Tampa

case and, as in the Mast, Foos Co. case, it was ap-

plied to a mere order rather than a decree.

III.

The history of this legislation and of the

times shows that it was the intention of

Congress to give the right of appeal to the

defendant but to deny it to the com-

plainant.

It is well settled that the Court, in construing a

statute, will endeavor to carry out the intention of the

PLEA ELOY SR SOLERO NMOS

OP APRS Ae RENE US EES TR ee B

: ae ee ye ee |

PTA ERS 198

Congress, and will consider the circumstances which

led to the passing of the statute, and the history of

the statute; and that the object which the Congress

sought to attain and the evil which it was endeavoring

to remedy may always be considered for the purpose

of aszertaining its intention (Durland vs. U. S., 161

U. S., 306, 313; 16 Sup. Ct., 508; 40 L. Ed,

709; Platt vs. Union Pac. R. Co, 99 UV. S&,

48, 59; 25 L. Ed., 424; Aoh'saat vs. Murphy,

96 U. S., 153, 160; Meydenfeldt vs. Gold & Silver Min.

Co., 93 U. 8., 634, 688 ; Brown vs. Duchesne County, 60

U.5S., 183, 194; 15 L. Ed., 595; Blake vs. Banks, 23

Wall., 307, 319; U. S. vs. Freeman, 3 How., 556, 565;

Wilkinson vs. Leland, 2 Pet., 627, 662; U. S. vs. Wilt-

berger, 5 Wheat., 76, 95; Brown vs. Barry, 3 Dall.,

365, 367.

It seems too clear to require argument or authority

that the effect and purpose of the amendment of Feb-

ruary 18, 1895, making the statute read that an appeal

may be taken where “an injunction shall be granted,

continued, refused or dissolved by an interlocutory

order or decree,” etc., was to confer a right of appeal

upon the complainant; and that when those words

were omitted in the amendment of June 6, 1900, and

the original phrase, “where * * * an injunction

shall be granted or continued by an interlocutory order

or decree” was substituted, the effect and purpose

was to take from the complainant the right of appeal

conferred by the amendment of February 18, 1895.

The Court in the isolated case of Chicago Co. vs. Miller

Co. 133 Fed., 541,544, relied upon by the petitioners, said

that under the present amended act in case of a decree

awarding a temporary injunction “the complainant’s

lack of right to a cross-appeal would be indisputable.”

This was said in face of the fact that the act provides

separately and distinctly for the two classes of decrees,

final and interlocutory, and in the face of or in igno-

rance of the fact that precisely the kind of decree

which the Court mistakenly supposed had been ren-

dered by the Circuit Court in that case had been re-

peatedly held by the Supreme Court of the United

States to be an interlocutory decree.

It must be assumed that the Congress was aware of

the long line of decisions distinguishing between

“final ” and “ interlocutory ” and “ orders ” and “ de-

crees;” and there is no warrant either in the words of

the act or in the history of the act for any other con-

clusion. ;

The history of the act, and particularly the history .

ofthe amendments and the attempted amendments,

shows that the almost uniform interpretation of the act

as conferring a right of appeal upon the defendant only 4

is in accordance with the clearly expressed intention 4

of the Congress. i

The Judiciary Act, or the Evarts Act, of 1891, in ad-

dition to creating the Circuit Courts of Appeal, pro-

vided, amongst other remedies, for an appeal by a i

party enjoined, or as Mr. Evarts put it in the debate

ensuing his report it provided for “ allowing an appeal

in equity causes from injunction” (C. R., 51st 1st sess.,

p. 10222).

The Act of 1891 had its origin ina bill introduced

and later reported by Mr. Rogers, H. R. 9014. This

bill, afterwards presented to the Senate, was reported

by Mr. Evarts with amendments, that is, the whole

bill was stricken out and a substitute bill submitted.

So far as the purposes of this discussion are concerned,

the substitute bill was the same as the present law.

In the original House Bill, as reported by Mr.

Rogers, Sec. 5 covered appeals generally. This section

provided for an appeal to the Circuit Court, which

was thus made an Appellate Court,—

“ Where upon a hearing in equity in a District

Court, an injunction shall be granted or continued

by an interlocutory order or decree in a case in

which an appeal from a final decree may be taken.”

Later in the same section and on the same page of

the original bill, occurs the following :

‘Upon such writ of error or appeal, the Circuit

Court shall review such order or judgment or de-

Sate ae ine

BION EAE OE SEMEN

Pek tg ap MR

LAPS PEE OS TE CORT IIT

ote

DSP aie cereeerceme mere TES eee |

cree and may affirm, modify or reverse the same,

or may make such order, or may render such

judgment or such decree as the District Court

should bave made or rendered, or may order a

new trial or other proceedings therein.”

Contrasting this with the terms of the law, as finally

enacted, it will be observed that Sec. 6 of the Act pro-

vides for a “review ” of the final decisions of the lower

Court. Sec. 7 provides only that “an appeal may be

taken from such interlocutory order or decree granting

or continuing such injunction.”

The rejection by the Congress of the Rogers House

bill and the substitution therefor of the limited lan-

guage of the Evarts Act, above quoted, could have had

no other purpose than to limit the right of appeal to

a defendant under injunction.

In Butifield vs. Strunahan, 192 U.S., 468, this Court,

in construing an Act of March 2, 1897, considered the

bill as originally presented in the House, and the

amendments thereafter made in the Senate, quoting

with approval the following language from the decision

of the Court of Appeals for the Second Circuit on the

same subject.

“As originally introduced in the House, the

bill prohibited the importation of ‘any merchan-

dise as tea which is inferior in purity or fitness

for consumption to the standards provided in §3

of this act.’ It was amended in the Senate by in-

serting the word ‘quality’ between the words

‘ purity ’ and ‘ fitness for consumption ’ wherever

they occurred in the House bill. The amendment

evinces the intention of the Senate to authorize

the adoption of uniform standards by the Secre-

tary of the Treasury which would be adequate to

exclude the lowest grades of tea, whether demon-

strably of inferior quality, or unfit for consump-

tion, or presumably or possibly so because of their

inferior quality. The House concurred in the

amendment, and the measure was enacted in its

present terms.”

x ROLE LOIN EILEEN EEE BO PLE IER I TED

Even in ordinary instances proposed amendments

and reports thereupon are proper sources of informa-

tion in the construction of a statute. In this instance

the character of the amendments make them of peculiar

significance (Church of Holy Trinity vs. U. S., 148

U. S., 457; Buttfield vs. Stranahan, 192 U. 8., 470).

The debates on the original bills, which eventuated

in the law, appear in the Congressional Record as fol-

lows:

5ist Congress, First Session, rages 3298, 10193,

10199, 10217, 10278, 10302, 10335, 10363.

Second Session. Pages 2198, 3087, 3535, 3583.

These debates are not referred to as in all instances

offering sources of information for the interpretation

of the law, but as evidencing the unusually careful at-

tention given this bill in both Houses of Congress and

by the Judiciary Committees and the distinguished

gentlemen who reported these bills.

The Judic’ary Committees of Congress, as the re-

ports indicate, considered these bills as a quasi-judic-

ial tribunal ; and the great learning and distinguished

reputation of Mr. Evarts make it impossible to premise

anything but intention in the sharp differentiation of

the phrases of sections 6 and 7 of the Act so carefully

studied and revised by him.

This Act has been the subject of many proposed

amendments, most of them turning upon the suggestion

of inserting or omitting the phrase found in the

amendment of 1895, “ refusing, diss lving or refusing

to dissolve” and upon the appointment of receivers

and the granting of an appeal froma refusal to appoint

a receiver.

It has been heretofore observed that the phrase,

“refusing, dissolving or refusing to dissclve an in-

junction,” was added to the statute in February, 1895,

‘and was subsequently omitted from the statute when

the amendment respecting the appointment of receivers

was made on June 6, 1900. Since 1900, at practically

every session of the Congress, an attempt has been

made to again insert into the statute the phrase, “ re-

LER Ee, EN if

ROT i SPINEL OE TY SED

FOR POSER RO

SPOIL YM

BRON yecommmnen punanectenrn ree arene cniiieniiniiabiieaeal

fusing, dissolving or refusing tu dissolve an injunction.”

The reports of the distinguished Chairmen of the

Committees on Judiciary of House and Senate disclose

’ the precise intention of the Congress respecting the

rights of the complainants and defendants in taking

appeals under this Act. Nothing could be more ex-

plicit and direct, for example, than the report of Mr.

Overstreet to accompany H. R. 13,843, Report No.

2849, Fifty-sixth Congress, Second Session, the session

immediately following that in which the amendment of

June 6, 1900, had been adopted, taking from the law

the phrase conferring a right of appeal upon a com-

plainant. In that report the chairman said :

“ The act creating United States Circuit Courts

of Appeals was approved March 3, 1891 (U. S.

Stat. L., vol. 26, p. 828). Section 7 relates to ap-

peals from interlocutory orders or decrees. It

gives an appeal from such an order or decree

granting or continuing an injunction, but none

from an order refusing or dissolving an injunction.

The effect is to allow an appeal in such cases to

the defendant, but none to the plaintiff.

“ Section 7 was amended by act approved Feb-

ruary 18, 1895 (U. S. Stat. L., vol. 28, p. 666), so

as to provide that an appeal should be from an

order granting, continuing, refusing, dissolving, or

refusing to dissolve an injunction, thus putting the

plaintiff and defendant on an equality with respect

to the right of appeal.”

This same report was repeated in Report No. 186 on

H. R., 109, 57th Congress, First Session.

Mr. Fairbanks from the Senate Committee on Ju-

diciary, submitted report No. 2206 to accompany S.

5732 in 56th Congress, Second Session. He said:

“ The original act (circuit court of appeals act,

March 3, 1891, I Supp. Rev. Stat., p. 904) pro-

vided for an appeal from an interlocutory order or

decree granting or continuing an injunction, etc.

“ The first amendment (February 18, 1895, II.

Supp. Rev. Stat., p. 376) provided that ‘an appeal

may be taken from such interlocutory order or de-

cree granting, continuing, refusing, dissolving, or

refusing to dissolve an injunction, ete. The bill

(H. R. 5216) was introduced in the House by Mr.

Draper and reported to the Senate by Mr. Hoar,

with an amendment providing for an additional

bond.

The second amendment (June 6, 1900, H. R.,

4915) provided for an appeal in cases where a

receiver has been appointed. But it amended the

original section instead of the amended one, and

repealed (unintentionally, it has been suggested)

the first amendment. It should be mentioned,

however, that the bill (S. 3685) reported April 9,

1900, and now on the Senate Calendar, contained

a clause ‘that where * * * an injunction

shall be granted, continued, refused or dissolved ;’

* * * and the words ‘refused or dissolved’

were stricken out by the committee.

The House bill (H. R., 4915) agreeing with the

Senate bill, thus amended, was passed by the

Senate June 6, 1900.

The third amendment to the present bill (8.

5732) seeks to restore the provisions of the first

amendment (February 18, 1895) giving an appeal

to the plaintiff in an injunction case, and retaining

the provision of the second amendment (June 6,

1900) (H. R., 4915) giving appeals in receivership

cases.

In brief, the purpose of the pending bill is to

give the right of appeal from all interlocutory

orders relating to injunctions or receiverships

equally to the plaintiff and defendant.

The committee is of the opinion that either

party should have the right of appeal from such

orders, and recommend that the bill do pass.”

The debate in the House on this point will be found

in the Congressional Record, 56th, 2d Session (pp.

3227-9). In the opening of the debate Mr. Overstreet,

; Ee ee an

ERAS

the Chairman of the J udiciary Committee, replying to

a question, said :

“ Tt has been considered by the Judiciary Com-

mittee and comes before the House with practi-

cally a unanimous report. The gentleman from

Missouri (Mr. De Armond) reserved the right to

object ; but no minority report has been filed. It

is a lawyers’ bill for the purpose of granting a

right of appeal to either the plaintiff or the de-

fendant in both injunction and receivership pro-

ceedings.”

Later in the discussion the objections to the bill

were pointedly expressed and answered as follows :

“ Mn. De Anmonp: Well, I do not know whether

it would have especially that effect, but it would

have the effect of permitting a person to appeal

when an appeal is not necessary for his protection

but prejudicial to his adversary, where, though he

give bond, the liability can be only nominal and

theoretical. This bill will give the effect of an

order or decree, though such order or decree be

denied, and an affirmance by the higher court will

entail no responsibility for substantial damages,

however great in fact the damages may be. At

least that is my opinion, and for these reasons I

am opposed to the bill.

“Mr. Overstreet: Mr. Speaker, this bill has

received the endorsement of the National Bar As-

sociation. It merely seeks to place the plaintiff

and the defendant upon an equality in matters of

appeal. There is no additional power granted the

circuit or district courts, and the same method of

procedure in appeals will obtain in this particular

as obtains at present in other cases. Proper safe-

guards are provided in the mensure requiring ad-

ditional bonds, and there is nothing further in-

volved than the privilege of appeal to either party

upon meeting the requirements of the court in the

matter of the bond.”

This bill, like others of the same import, passed the

House (¢.g., ©. BR, 56th, 2nd, p. 3234; 57th, Ist, p.

1706 ; 58th, 3rd, p. 2412) only to be defeated in the

Senate.

The debate in the Senate in 56th, 2d ‘session, is

found particularly at pages 2651-2, C. R., and is sig-

nificant in that it briefly states the intentions of the

Judiciary Committee and the authors of the bill and

the opposition to the bill by an influential member of

the sub-committee of the Senate Jadiciary Committee.

“ Mr. Farrpanns : It changes it by giving to the

plaintiff the right of appeal from an order refus-

ing an injunction.

“The act creating the United States circuit

courts of appeal authorized an appeal from an in-

terlocutory order or decree granting or continuing

an injunction, but not from an order refusing or

dissolving an injunction. This act was amended

February 18, 1895, so that an appeal would lie

from such interlocutory order or decree granting,

continuing, refusing, dissolving or refusing to dis-

solve an injunction, Both the plaintiff and de-

fendant are thus put upon an equal footing as re-

spects the right of appeal.

“The act was again amended June 6, 1900.

This amendment provided for an appeal in cases

where a receiver is appointed. It amended the

original act instead of the first amendment, and

repealed the latter.

“The pending amendment simply restores the

provisions of the first amendment, giving an ap-

peal to the plaintiff in an injunction case and re-

taining the provision of the second amendment

giving appeals in receivership cases.

“ The bill seeks to place the plaintiff and de-

fendant in injunction and receivership cases on an

absolute equality as respects the right of appeal.

“ There is a strong and urgent demand from the

bar for the passage of this bill.

“Mr Teter: Mr. President, until 1895 it had

never been the practice that an appeal would lie

from a refusal to grant an injunction. That got

into the statutes in some way, and later on it got

out, and this is a proposition to restore it.

“ I do not want to object to the consideration

of the bill, bat I want to enter my protest against

it. I did not agree to it in the committee and I

do not agree to it now. It is a vicious thing to

allow an appeal from a mere refusal to grant au

injunction. It enables parties who have really no

claim to go before court and ask for an injunction,

and when the court says: ‘No; you have no

case,’ they can by such an appeal tie up the prop-

erty and get into litigation. It opens the door for

blackmailing, and particularly in the Western

country ; for instance, in the case of a mining

claim or something of that kind. It is vicious,

but I do not want to object to the consideration of

the bill, because a majority of the committee re-

ported it. I want to say, though, it is not a good

bill, and it onght not become a law.

“Mr. Tuurston: Mr. President, permit me to

state that this is a bill which was brought to the

attention of Congress through the American Bar

Association, and the bill was drafted by that as-

sociation. The necessity for it has been very ap-

parent to the bar of the country. They were so

much interested in it that they sent here a com-

mittee of leading lawyers, who appeared before

the Judiciary Committee and presented it to our

consideration.”

The debate in this instance was between gentlemen

of great reputation and of large experience. As the

record shows, Messrs. Fairbanks and Teller were in

fact members of a sub-committee having this matter

in charge. It thus appears that the Senate Committee

on Judiciary and the Senate had ander consideration

a proposition to insert into the present law that

phrase, taken from the amendment of February 18,

1895, which was intended by the Congress to give the

complainant a right of appeal, and that this clause,

though favorably reported by the Senate Committee

on Judiciary, and later passed by the House, was so

vigorously and successfully opposed by influential

members that the Senate refused to so amend the law,

and bas continued to refuse to so amend with each

succeeding Congress. The situation, therefore, is un-

usually clear in this matter. A specific phrase was

added to Section 7 of the original act for the very pur-

pose of giving a right of appeal to the complainant.

That clause, in a subsequent amendment, was omitted

from the law, and the Congress has specifically and

repeatedly refused to replace the phrase and give the

right of appeal to the complainant, a right that is now

suggested may be given by the Court in the face of the

direct prohibition of the Congress.

There can be ne question of the intent of the Con-

gress by Section 7 of the original act to give to the

defendant enjoined a right of appeal from either an in-

terlocutory order or an interlocutory decree. That

intention should be made effective by the Courts.

There can, on the other hand, be no question of the

intent of the Congress by and since the amendment of

June 6, 1900, bringing the act back to its original

form, to deny to the complainant the right of appeal.

That intention should be made effective by the Courts.

The first intention of the Congress was remedial. To

make it effective it was, in some patent suits, neces-

sary to consider the merits of the cause so that it

might be determine! if the defendant had been rightly

enjoined.

The second intention of the Congress was the denial

of aremedy, To make that denial effective is it re-

quired that the Courts shall hear the appeal of the

complainants or go one step beyond deciding whether

or not the defendant was rightly enjoined and whether

ornot the bill should be dismissed to the extent to

which the injunction is based upon it ?

Where a law was intended to provide a remedy for

one of the parties, but not for the other, it should not

be construed so as to give the remedy where it was

intentionally denied.

The petitioners contend that the effect (if not the

intention) of Section 7 is to introduce the practice in

equity as formerly administered in the Court of Chan-

cery in England and in the State of New York and in

the House of Lords. It is a complete answer to this

suggestion that Congress refused to adopt this prac-

tice of giving the right of appeal generally to either

party from interlocutory orders or decrees, and strictly

limited the right of appeal to certain special cases

where peculiar hardships resulted to a defendant.

Nothing appears more plainly from the language of the

act, and from the history of the legislatere and the

times, than that Congress was careful to adhere in the

main tothe practice which had been established in

our judicial system for a century, and to modify it only

in a most limited manner.

Iv.

The argument of “convenience” ad-

vanced by the petitioners is wide of the

mark. The question in issue is the con-

struction of a statute.

But even the argument of convenience does not sup-

port the contention of the petitioners.

We will first consider this point with reference to

patent suits. In the very case upon which the pro-

DRTC ART RESE AE AWN ET 27 RPE LEER OL LILIES, ATEN IAP BETS Se RINNE PRON

ceedings rest the patent includes two classes of claims

—process claims and claims for an article of manu-

facture. All of one class, the process claims, 9-12,

were held not infringed. The petitioners are en-

deavoring to have the defendant and the Court con-

sider now these distinct claims as well as those for the

article of manufacture.

It not infrequently happens that a patent in litiga-

tion involves a simple article of manufacture and a

difficult process, or a process involving difficult scien-

tific or mechanical questions. In such a case a de-

fendant enjoined from selling the article, but not

infringing the process, might have the injunction

promptly dissolved upon a mere comparison of the

articles by the appellate court, without being obliged

to endure the long delay involved in a consideration of

the whole patent.

Would it have served the convenience of any one

not interested in oppression to have had all four of the

separate features of Scriven vs. North, supra, brought

up by the appeal of the defendant if he had been en-

joined merely upon some of the claims of the patent?

In Union Signal & Switch Co. et al. vs. The Phila.

& Reading R. R. Co., 87 Fed., 906, and 96 Fed., 761,

a series of five patents, some of them involving a com-

plicated system of electric railway signaling, were

before the court. One patent was for a simple and

minor improvement for electrically connecting two ad-

joining rails. If the defendant had appealed from an

injunction relating to this minor improvement alone,

would it have been “ convenient” to have pressed upon

the parties and the court a consideration of all the

cther complicated inventions ?

In a case of “double patenting” with the broad

claim in the second patent, if the defendant were en-

joined upon the broad claim, and not upon the narrow

claims of the first patent, would it be “ convenient ” to

consider all the questions if the defendant should base

an appeal upon the abandonment in law of the broad

claim ?

TSI D DRI ALT OF

ue nee . vy

Oo : c

Dea PLT mA Le OE LB HN OLS ee eae oe . — 4:

SS Fc: ¢ oe Ree RG ES RI LOE AP IIE AN MRI SOLE ENS LE eS 5

. ah Sore |

In a reissue case where the patent included the nar-

row claims of the original and a broadened claim of

the reissue would it be “convenient” to consider all

the questions of patentable novelty of all the claims if

the defendant should base an appeal from an injunc-

tion relating to the broad claim upon the doctrine of

Miller vs. Bridgeport Brass Co. ?

It may often happen, as in the recent case of Marlin

Firearms Co, vs. Kellogg, 139 Fed., 31, that the de-

fendant is enjoined from using some separate feature

of a complicated structure, a feature, however, so

placed in the mechanism that it might require an en-

tire reorganization of the mechanism to omit it.

Would it be just or “convenient” if, in the absence of

a specific provision of the statute, the defendant

should be delayed in having the injunction dissolved

by the necessity of considering all the difficult and

distinct questions involved in the other claims ?

In the much qzoted case of Sessions vs. Romadka, 21

Fed., 124, the patent included four different articles

of goneral applicability applied to different parts of a

trunk. The consideration of one did not involve a

study of the others. Ifthe defendant had been en-

joined (as he was) on any one it would have been a

hardship, not a “ convenience ”, to have discussed all,

in order to reach a conclusion upon one.

We have not attempted, in this brief statement of

what appears to be an irrelevant feature of the dis-

cussion, to in any degree catalogue the classes of

patent causes in which the practice contended for by

the petitioners would result in placing an unnecessary

burden upon the Court and a hardship upon the de-

fendant, whom the statute was intended to relieve.

While in some patent cases it might be convenient for

the Court to entertain such cross-appeal, in equity

suits generally it might often result in great hardship

and burden upon the Court and the parties to permit

such a cross-appeal simply because an injunction is

granted in some formal or trifling matter by some por-

tion of the decree.

POLE LAE LIE RIPON LIN RL ICTR NA LTR A PSION ES LETT AIOE BET I ——

For example, where a court of equity has once ob-

tained jurisdiction of a cause of action, injunctions are

sometimes issued to prevent a party to the suit from

bringing an action at law, or from bringing a suit in

equity in any other court. In such case the injunc-

tion, if granted in an interlocutory order, would fre-

quently be continued in the interlocutory decree.

This injunction would often be a purely formal matter,

not depriving either party of any property rights, but

simply preventing one party from persecuting or

harrassing the other by unnecessary litigation. ‘The

injunction might be such as a court of equity would

grant as a matter of course, and as to the pro-

priety of which there could be no substantial ques-

tion. The other parts of the interlocutory decree

might direct long and complicated accounts or

further judicial determination on the part of a master

or referee, so that an appeal from such

other parts of the interlocutory decree at this stage

would be unjustifiable or even absurd. Yet the mere

presence in this decree of the clause granting the formal

injunction would give the parties, one or both of them,

the right to bring the entire interlocutory decree up on

appeal, while the very same interlocutory decree in

another case, if it did not happen to contain this

formal provision for an injunction, could not be ap-

pealed from.

The intention of Congress in passing Section 7 was

two-fold ; first, to give a defendant under injunction

the right of appeal; and, second, to give him the right

or opportunity to have a speedy determination of such

appeal. The construction contended for by complain-

ants would defeat this second purpose of Congress.

a halt he Be Dk dt: air

LE MES OS Sec. |

Vv.

If the language of the statute is ambigu-

ous, it will be strictly construed against

any right of appeal in the complainants (1)

because the original Statute of 1891 was

uniformly construed in this way, and Con-

gress must be held to have adopted this

construction by re-enacting that law with-

out change ; (2) because the contempora-

neous construction was against such right

of appeal; (3) because the construction

contended for by the petitioners would re-

verse a long established practice and sys-

tem, and would result in absurdity ; and (4)

because the intent of Congress is unmistak-

able and must control, even if it were

against the literal meaning of the statute.

1. It is a well settled principle of statutory construc-

tion that where an act receives a certain interpretation

from the courts, and is then modified or repealed, and

is afterward re-enacted in the same or substantially the

same language that was used in the original act, the

statute as re-enacted will be given the same construc-

tion that was put upon the original act. The reason

for this is obvious. Congress is presumed to have

known and to have taken into consideration the con-

struction put upon the original act by the courts. If

Congress, with such knowledge, again uses the same

language, it must necessarily be because Congress in-

tends that the re-enacted law shall bear the same con-

struction. Otherwise Congress would certainly have

changed the language of the act. |

In Sessions vs. Romadka, 145 U.S., 30, 42, this Court

was called upon to construe Sections 4917 and 4922 of

the Revised Statutes. The Court said :

ROR NE MELA A SER NG RITE LIOR MEE REIS EIDE ELA SARTO EF BRITON I EET

“ Congress, having in the Revised Statutes,

adopted the language used in the Act of 1837,

must be considered to have adopted also the con-

struction given by this Court to this sentence, and

made it a part of the enactment.”

Se. In re Guggenheim Smelting Co., 121 Fed. Rep.,

153, 161.

“In the interpretation of re-enacted statutes

the Courts will follow the construction which they

received when previously in force. The legis-

lature will be presumed to know the effect which

such statutes originally had, and by re-enactment

to intend that they should again have the same

effect.”

Sutherland on Statutory Construction (2d

Ed.), § 403, p. 780.

We submit that this rule of construction, resting

upon sound reason and authoritatively declared by

this Court, is determinative of the present case. The

Act of 1891, as we have shown, was uniformly con-

strued by the courts to mean that the complainant had

no right of cross-appeal. The amendment of 1895

broadened the right of appeal by giving to complain-

ant an appeal from certain kinds of interlocutory

orders or decrees. The amendment of 1900 did away

with this broader right of appeal and returned to the

language of the original act, adding only the provision

relating to receivers. Under these circumstances the

re-enacted law of 1900 must carry the same construc-

tion as that given to the original act.

2. It is a well-recognized principle of statutory con-

struction that the contemporaneous construction of a

statute will, in a case of doubt or ambiguity, be given

great weight.

In Jlahn vs. United States, 107 U. 8., 402, the ques-

tion arose as to the meaning of an Act passed by Con-

gress in 1867 and repealed in 1874. The Act had been

Ra Ee

Le DIRE LED PS ER Ie OO ee

Seatana at theak hian emt aeeenee

Sethi

construed in a certain way by the Government during

these seven years and Congress had not interfered with

such construction.

The Court of Claims held that such contemporaneous

construction of the statute should be adopted and fol-

lowed if possible.

This Court affirmed the decision of the Court of

Claims and approved of its reasoning, saying :

“ The court added that such construction did

not appear to it unreasonable and might well have

been reached in the exercise of a sound judgment,

and that, regarding the statute as ambiguous, all

of the circumstances of the case were such as to

justify the application of the principle of interpre-

tation sanctioned by this courtin U.S. v. Pugh,

99 U. S., 265 [XXV., $22], that, ‘In the case of a

doubtful and ambiguous law, the contemporaneous

onan aie who have been called upon

to carry it in®@6ffect is entitled to great respect.

Edwards v. Darby, 12 Wheat., 210,’ and where

this court refused to interfere with such construc-

tion after it had been acted upon for a long time.

See, also, U. S. v. Alexander, 12 Wall., 177 [79 U.

S., XX., 381]; Peabody v. Stark, 16 Wall., 240 [83

U.S., XXL, 311]; Smythe v. Hiske, 23 Wall., 382

(90 U. S., XXIIL, 49); U. S. v. Moore, 95 U. &.,

763 [XXIV., 589).

We submit that the same considerations apply to

a case where a law has been construed by the judicial

department of the government as to a case where the

construction has been given by the executive officers.

This is especially true where the act relates to ques-

tions of procedure or to the general system or method

of administering justice. If the contemporaneous con-

struction adopted by the Courts had been contrary to

the intention of Congress, Congress could easily have

amended the law so as to correct the error. The fact

that Congress has not amended the law but has, on

the contrary, re-enacted it, is conclusive evidence that

the contemporaneous construction of the Courts was

correct.

See, also, Pennoyer vs. MeConnavghy, 140 U. 8.,

23; Price vs. Lancaster Co., 189 Pa. St., 95, 98; Fisk

vs. Henarie, 142 U.8., 459; Packard vs. Richardson,

17 Mass., 121, 143.

As the contemporaneous construction of the act of

1891 was uniformly to the effect that the complainant

had no right of appeal, such construction should pre-

vail, in accordance with the principles laid down in

the above authorities.

3. It is a well-established rule of statutory con-

struction that where a statute changes or amends a

long-established practice, or a system that has been in

existence for a long time, the statute will be strictly

construed and held not to introduce any greater

change than necessarily follows from its language, and

this is especially true where a more liberal construc-

tion would result in an absurd modification of the

system.

It has been a recognized feature of our judicial sys-

tem not to allow appeals from interlocutory orders or

decrees. When Congress departed from this practice

in Section 7 of the act of 1891, it strictly limited the

right of appeal to interlocutory orders or decrees

granting or continuing an injunction, The narrow

way in which this exception was drawn strongly em-

phasized the fact that Congress still favored the policy

which had prevailed from the foundation of the gov-

ernment as to appeals, and intended to modify it only

in this limited way. In 1895 the right of appeal was

extended to orders or decrees refusing or dissolving an

injunction. But in 1900, Congress manifestly con-

cluded that the general system that had previously

prevailed bad been departed from too far, and re-

enacted the law in its original form. It is a significant

fact that even in the broader act of 1895 the complain-

ant was not given a geveral right of appeal from inter-

locutory orders or decrees. The right so conferred

upon complainant was specifically limited to interloca-

tory orders or decrees refusing or dissolving an in-

junction. Underlying all of these special provisions

there is the fundamental fact that Congress did

not intend to establish appeals generally from

interlocutory orders or decrees. Inasmuch as it has

been the general theory or policy of the law not to

gravt such appeals, it would seem reasonable and in

accordance with sound principle to strictly construe

any statute amending the law in this regard. It is safe

to assume that whatever exception to the general

policy of the law Congress intended to establish would

have been specifically and clearly set out in the act.

It cannot be presumed that Congress intended to confer

any right of appeal which is not clearly and specifically

set forth.

Sutherland on Statutory Construction (2d ed.) Sec.

581, page 1072, states the law in this way ;

“ But after the statutory system or policy has

been long established and is well defined, it will

not be lightly presumed to be departed from or

abandoned.”

The construction contended for by the petitioners

would introduce an absurdity into the law. Assuming

that an interlocutory order or decree grants or con-

tinues an injunction, the complainant, according to the

contention of the petitioners, would have a

right of appeal if the defendant appealed, but

would have no right of appeal if the defendant did not

appeal. The complainant would be as much aggrieved

in the one case as in the other, and yet in one

case it would have the right of apyeal, and in the other

it would not. If the law had provided in terms that

the complainant should have a right of appeal by and

with the consent of defendant, or upon the defendant's

written stipulation to that effect, it plainly would be ab-

surd upon its face, yet the act, if construed as peti-

tioners contend, would be the same as if such ridicu-

lous clauses were read into it.

Again, if an interlocutory decree in « patent suit, for

example, should grant an accounting under all the

claims, but should, for some reason, deny an injanc-

tion, the complainant would have no righ of appeal.

If, however, the decree granted still further relief to

the complainant in the form of an injunction, and the

defendant appealed, the complainant would have the

right of appeal. In other words, when the complain-

ant gets less relief from the Court it has no right of ap-

peal, but when it gets more relief it has the right of

appeal. Such a system would be illogical and con-

trary to common sense and justice. It is a rule of

statutory construction that absurdity will be avoided if

possible.

In United States vs. Kirby, 7 Wall., 482, this Court

said :

« All laws should receive a sensible construc-

tion. General terms should be so limited in their

application as not to lead to injustice, oppression

or an absurd consequence.”

In State vs. Clark, 5 Dutcher, 96, 99, the Supreme

Court of New Jersey said :

“Tf a literal construction of the words of a

statute be absurd, the act must be construed so as

to avoid the absurdity. The Court must restrain

the words. The object designed to be reached by

the act must limit and control the literal import

of the terms and phrases employed. 1 Kent's

Com., 462; Commonwealth vs. Kimball, 24 Pick.,

870; United States vs. Fisher, 2 Cranch, 400; 1

Bl. Com., 60.”

Sutherland on Statatory Construction (2nd ed.)

Section 347, states the law as follows :

“ In determining the scope of general provisions

there is a leaning to prevent absurdity, for it can-

not be deemed intended; also injustice for like

reason.”

4. The fundamental principle of statutory constrac-

tion to which all others are subordinate is that the in-

tent of the Legislature most control even where it is

against the literal meaning of the statute.

From the facts aod circumstances to which we have

previously referred, it follows unmistakably that what-

ever ambiguity, if any, there may be in section 7, it

was the intention of Congress to give relief by that

section to « defendant and only to a defendant, and

only in « case where the defendant was suffering from

at injanction. There is no single fact evidencing any

intent on the part of Congress to extend relief under

this section to a complainant. The only argument that

can be made in support of the petitioners’ contention

is that of convenience. But where the intent of the

legislature is clear, the question of convenience is not

to be considered ; the intent must control.

In Hawaii vs. Mankichi, 190 U. 8., 212, this Court

said ;

“The books are fall of authorities to the effect

that the intention of the law-making power will

prevail, even against the letter of the statute,” &ec.

In the Lurcka case, 4 Sawyer, 302, 317, Mr. Justice

Fievp said :

“Instances without number exist where the

meaning of words in a statute hax been enlarged

or restricted and qualified to carry out the inten-

tion of the legislature. The inquiry where any

uncertainty exists, always is as to what the legis-

lature intended, and when that is ascertained, it

eontrols.”

Sutherland on Statutory Construction (2d ed.), See-

tion 364, states the rule as follows :

“It is the intent of the law that is to be ascer-

tained and the courts do not substitute their views

of what is just or convenient.”

vit

The decree herein was interlocutory, not

final, within the meaning of the judiciary

act as interpreted by this Court.

One of the positions of the petitioners is that the

decree is in fact « final decree, and, therefore, appeal-

interlocutory decree, held to be appealable in the case

of Forgay ve. Conrad, 6 How., 201.

The decisions of this Court differentiating inter-

locatory and final decrees have been so numerous and

have so clearly crystallized the distinction between

interlocutory and final decrees that at this day there

should be no reasonable ground for say confasion ;

and this Court has so frequently emphasized the limi-

tations of the doctrine applied in /orgay os. Conrad,

supra, that the scope of that decision is absolutely

clear.

That a decree in a patent case awarding # perpetual

injunction and an accounting is interlocutory only,

because something within the pleadings yet remains to

be judicially determined, has been expressly deter -

mined again and again.

Barnard vs. Gibson, 7 How., 650.

—_ va. Vulean Iron Works, 166 U.5.,

The whole subject is thoroughly discussed in the

opinion of Mr. Justice Bow in McGourkey vs. Toledo

R. R. Co., 146 U. 8., 586, where namerous earlier de-

cisions are collated. From the decision it is made

clear that in order to be a final decree, there must be

no matter of controversy within the pleadings in the

case to be judicially determined after the entry of the

decree. A final decree disposes of every issue between

the parties raised by the pleadings, leaving nothing to

be done, except such ministerial action as may be ne-

GS OT TEE ee eee Ee <r

And it has been expressly decided that though a de-

cree order an absolute judgment with costs in favor of

a plaintiff in error on certain of the issues raised by

the pleadings, leaving nothing to be judicially deter-

mined as to such issues, yot the judgment is not final,

becanse other issues within the pleadings remain to be

determined, and, therefore, no appeal will lie.

Holcombe vs. McKusick, 2 How., 552.

And ina patent suit it has been held that even

though the decree dismissed the bill of complaint as

against one of several defendants charged with joint in-

fringement, yet the decree was not final, and, therefore,

not appealable.

Hohorat ve. Hamburg Amer. Packet Co., 148

U. 8., 262.

As was said by Judge Porsam in Marden vs. Camp-

bel<, 67 Fed. Rep., 809, 813, where the exact argument

made by these petitioners was overruled :

“It would be contrary to all well conceived

notions to imagine two final decrees in 3 patent

cause of tlis character.”

Moreover, precisely such a decree as the one at bar,

and in a patent case, has been specifically stated by

this Court to be interlocutory. In Astey vs. Burdett,

109 U. 8., 683, the Court said,

“The circuit court made an interlocutory decree

declaring the patent to be valid so far as claims 1

and 2 are concerned ; that those two claims had

been infringed; that the plaintiff was not the

$161,011.79, without costs to either party.

decisions of the circuit court in the case are re-

ported in 15 Blatebf. (C. C.), 349, 16 /d., 105, and

19 Id., 1. The defendants have appealed.”

The decision of the Cireuit Court (5 Bann. & Ard., 7)

shows that claim 4 was at issue and that the bill was

dismissed as to it.

Again, in Yale Lock Mfg. Co. ve. Berkshire Bank,

135 U. 8., 342, where one patent had been held invalid

and another valid and infringed, the Court referred to

the decree as an interlocutory decree and to the decree

entered after thed@ccounting on the valid patent, as a

final decree. Both parties appealed from the latter.

The petitioners herein admit that there can be but one

decree that they can appeal from as final, and urge

that if they are right in considering the present decree

& final one, they will, under the authority of Hill vs.

Chicago FR. f., 140 U. 8., 52, be unable to appeal from

the (real) final decree to be hereinafter entered, be-

cause such decree will necessarily be entered more

than six months after the entry of the present decree.

But in the Yale Lock case the complainant appealed

from the (real) final decree, and his appeal was ac-

cepted ; it apparently did not occur to Court or counsel

in the case that there was any question as to which

decree was final and appealable, and which merely

interlocutory.

Exactly the same situation was also present in

Bussey vs. Excelsior Mfg. Co., 110 U. S., 131, where

three patents were involved. The lower Court dis-

missed the bill as to one patent, and held the other

two valid and infringed. After an accounting, the

final decree was entered, and both parties appealed

from the latter decree.

It is thus the settled practice of this Court to con-

sider a decree in a patent suit, that dismisses the bill

as to part of the issues and orders an injunction and

an accounting as to others, as interlocutory and not

as ove that can be appealed from as a final decree.

It is, therefore, clear that there is no ground for the

petitioners’ contention that, because the decree defin-

itely decided the issues as to some of the claims of the

patent, it thereby becomes a final decree.

But the petitioners, as we understand their argu-

ment, contend that, granting the decree to be inter-

locutory, yet it is of the class that falls within the

doctrines of Forgay vs. Conrad, 6 How, 201, and Hill

vs. Chicago & Evanstown R. R. Co., 140 U. S., 52, and,

therefore, may be appealed from by complainants, in-

dependently of the provisions of Sec. 7 of the Judici-

ary Act as amended in 1900.

In Forgay vs. Conrad the decree directed the de-

livery to complainant of certain lands and slaves and a

sum of money, and provided that the complainant have

execution therefor. Mr. Chief Justice Taney in this

case took care to point out that if the decree below had,

as it should, refrained from ordering an actual delivery

of the property, with execution therefor, an appeal

would have awaited the coming in of the master’s re-

port.

Forgay vs. Conrad has frequently been misinter-

preted by eager appellants. Thus in Beebe vs. /eussel,

19 How., 283, the Court said :

“Tt has been supposed that this court did not

apply its present interpretation of the laws regu-

lating appeal in the cases of Whiting v. Bank of

the United States, 13 Pet., 6; of Michaud vs.

Girod, 4 How., 503, and in Porgay et al v. Conrad,

in 6 How., 201.

* * * * *

“In Forgay’s case, it was made upon the decree

given by the court below, and it was adjudged by

this court to be final, to give this court jurisdiction

of it. But it was so, upon the ground that the

whole merits of the controversy between the par-

ties had been determined, that execution had been :

awarded, and that the case had been referred to

the Master merely for the purpose of adjusting the

accounts. The fact is, the order of the court in

that case for referring it to a master was peculiar,

making it doubtful, if it could in any way control

or qualify the antecedent decree of the court upon

the whole merits of the controversy, or modify it

in any way, except upon a petition for a rehear-

ing.”

PEATE TS DAL GAL ERNE

See also, as definitive of Korgay vs. Conrad, and as

indicating the various essentials of a final decree,

or one appealable as such under the doctrine of that

case :

Barnard vs. Gibson, T How., 650.

Craighead vs. Wilson, 18 How., 199.

a Ry. Co. vs. Simmons, 123 U.

vy Be

McGourkey vs. Toledo Co., 146 U. S., 536.

Louisiana Bank vs. Whitney, 121 U.S., 284.

Covington vs. National Bank, 185 U. S., 270.

Moreover, the cases of Hstey vs. Burdett, Yale Lock

Mfg. Co. vs. Berkshire Bank and Bussey vs. Excelsior,

referred to above, are amply suflicient to show that

this Court has considered that interlceutory decrees in

patent cases, dismissing the bill as to some of the

issues, are not within che exception of the Forgay case.

It is said by the petitioners that this case is like the

case of Scriven vs. North, 134 Fed. Rep., 366, in the

PBS LONER ILL EELS TENNEY ORT EI OE aN es = NE

Fourth Circuit, where it was held that an appeal by

complainant would lie under the doctrine of Yorgay vs.

Conrad. But the decree in this case is wholly unlike

the decree in the Scriven case, and is not within the

principles there announced. Moreover, the reasoning

in the Scriven case, even as applied to the facts of that

case, is at variance with Forgay vs. Conrad, upon which

the Court based its decision.

The Scriven case included four distinct and “ sepa-

rate causes of action ”—(1) patent infringement, (2)

trade-mark infringement, (3) unfair copying of goods,

(4) unfair dressing of goods. As to all but the fourth

of these, the decree dismissed the bill. The Court

held that the decree was so exceptional that it could

be considered final, citing the Forgay case. There is

no such decree in the present case. A single patent is

involved and the complainant has merely been refused

as broad relief under its patent as it asked. It is an

ordinary interlocutory decree in a patent cause.

But even as relating to the exceptional decree in the

Scriven case, the Court, we submit, misapplied the

ruling of this Court in the Forgay case, because the

decree did not order any delivery of property or award

execution. The complainant suffered only that delay

which must in every case be suffered by a party who

must await the entry of a final decree before appealing.

The suggestion by the petitioners that the holding

in the decree that some of the claims of the Claus

patent are invalid “divests complainants of their prop-

erty” is absurd. The decree only postpones, if these

claims are valid, the enforcement of complainants’

rights thereunder.

The petitioners have misleadingly cited the case of

Hills vs. Chicago R. R. Co., 140 U. S., 52, so quoting it

as to make it seem in direct conflict with the decisions

cited herein. In the Hill case the bill was dismissed

in tuto as against many of the defendants, and against

the others there was but a single severable item left to

be determined by the master. Snch a decree was “ aD

PA ET EP ARI SURI BIST EID ERE LOSI

exception created by the peculiar circumstances of”

the case.

“— Bank vs. Smith, 156 U. 8., 330,

35.

Its holding was not even broad enough to include a

case where the bill was dismissed as to certain of

alleged joint infringers, but not as to the others.

Hohorst vs. Packet Co., 148 U. S., 262, 266.

It is submitted that the decree herein is not of such

character as to fall within any of the exceptions

announced by this Court to the general rule

“that a decree to be final for the purposes of an

appeal must leave the case in such a condition

that if there be an affirmance here, the Court

below will have nothing to do but to execute the

decree it has already entered.”

Dainese vs. Kendall, 119 U.S., 53, 55.

National Bank vs. Smith, supra.

Abvithrd), Svein tia, Thacker, 109 4, IF

ection Saga ty. 93. Tharten 1221. of, 9/

and authertia Hen ltd .

VII.

The petition should be denied.

New York, February 19, 1906.

Respectfully submitted,

Rosert N. KEnyon,

Watrer F. RoGeErs,

JacoB STEINHARDT,

Of Counsel for New England Enameling

Company.

DAR

[29350]

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.