# Opposition Brief — Ex Parte National Enameling and Stamping Company

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386020_0011%3A2

## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1906
- **Citation:** 201 U.S. 156

## 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

—

2

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

3

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.

© Se NEA SAN

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-

5

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

ee

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

ee
i
FFs
fi
|
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.”

FE

1

i

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

7

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-

a

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."

r]

A

SAS

Seton use

Fede. WESSON

ee

eit SP eS
Gola ataley S

or. Retin

10

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

1l

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

12

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.”

4
if
a
y
4
4
2
4
af
é
e
o3
%

Wie Se NS aden a

eh ak POP Na Ee
Eainy eee Wa RARER ha SP

Rae ae TEE

Piscesintonisess - mana

13

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 |

i.
D q
%

i
a
" is
i
is

|
oa
,
g
9
‘d

3

@

>

+
3
.
Ke

gta

ees F

ee aii Ge eieWAtS fh

14

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-

15

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.

k
r.
hs
}

a |

SS bE EIS BS ON at SER EL ae Bok

vind RSE

16

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

17

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

——

18

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

19

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
. >

i

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.

a
r ~——-

24

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

25

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

26

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-

27

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
3

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

2

%/

DSP aie cereeerceme mere TES eee |

28

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

29

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

30

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

31

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

36

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

37

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 |

38

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 ——

39

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. |

40

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

41

“ 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

42

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

43

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-

44

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.

45

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.”

46

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.”

47

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

50

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-

51

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

52

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

53

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]

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386020_0011%3A2. Public record. Not legal advice.