FEDERl..L'REPORTER,
vol. 52.
if w,ooIdc!DlllKe but the rents rreceived were collected wliintarilyor by 'ptoceSEV oOa w. ' It'wohldJ'lleein; therefore, thll/ttne court was rigpiin assuming that Mrs., iFreeuian was a party to the appeal, and in concluding.that the decreelll'he Gobtained ,against Clay, pending such appeal, for rents of the doW-or 'estate, was not conclusive of the rights of the parties. It nlsoseeu18tb us from lin, inspection of the record that this bill of review is \vithi:nit, equity. On, the filets :stateu in the original bill, filed in 1882 by MrS. 'Clay land BrutusJ. ,Clay against Mrs. Freeman and D., 1. Field, Jr., itis"clear, that: Field, Jr., as h at law, nor Mrs. ir Lucy C.I Freemim, as the widow of David 1. Field, Sr., was entitled to any rents df .the partnership iplantation and property until after the partnership due Christopher E Field were paid and settled. This was . the decisionf.of:,the supremer:court in the case as reported in 118 U. S. 97,6 Sup.dCtlRep. 964." Conceding the contention of Mrs. Freeman thil.t sbewu'nopartytothatsuit on appeal, the law ofthecase is nevertbelessJg'OQdraslafindingby the Bupremecourt of the United States upon a given state of facts. As Mrs. Freeman was not entitled to collect> rentBof' '})erdowef! estate prior to the payment of the 'partnership debt", 'it follows that she obtained pending the proceedings on ap}leal, &lid; the 'money she 'recovered were inequitably recovered. ' In short, the record shows that, in the proceedings that have been peodingfor some ye!lrslbetween the heirs of Christopher!. Field, ontl!le;cm8'sWe;and the widow and heirs of David '1. Field,.outhe other, Mrs. Freetmiq.qhasobtained,fromMrs. Clay the sum of, $2,215, which she hadnqulliglit to, aqdwhichshe,contrary to equity and good conscience'l'.etaiQs. 'Thedecreeof the cirouitcourt is affirined,with costs. , '
. Rl:dBMoND
'I).
Arrw6ol).
(Ciroott:OiM1 Qf'A!ppeals, Ff.rst otrcuu. September 27, 1892.
No. 8. 1. ApPIIAtJABLSI OltDE'Rs...;.INTERU>CUTORY DEOREJr-rNJUNCTlo'lt nr PATENT CASES-
A decree. whicb.is rEmderooafter full hearing on the merits, 'aild which sustains the ,validity: of a parenti,'oeelares'infringement; and awards a perpetual injunction and, 'an '\IoOco!llltin#l', is au. decree," granting an, injunction, from wbfcb an appeal will lie to the circuit court of appeals, under section 7 of the act of March8j ll:lllll .Jones 00. v;'Mu'Ilger, etc., 00.;1'>0 Fed. Rep. 785, 1 '0.' C. A. 668, apJ! · . ' ,", '
OF REJ,JEF-FoRM,o;s:MAN'DATlll.
,
It.
'The term "interl()cuto1'y'oi'der or decree" wast used iuits broadest sense in this eectioh, ahd,iho.1It1d be' kiv:elUuU ,sllope,tothe.elld that any, party aggrieved by any I,\r ,QtlCree B'jI;. injuocth>tI, at any stage of the proceedings, may have a spetidyremedy by " , .... . , 9,n, the circu.it cou,rt of appeals, and, in order to qj!termme tne rightfulness Of.. tJ:le lDJunc.tlOn, the court necessarily ,.' e,xwlbeeItll' wblJlecase on the mel'it9, and 'fe8tlhes th'l that t.bere,is no .' ,
.
,J ' .
8. SAME....DIl<lI@IuN ON! Apl'EAy,.:.;.MANDATl!:.
RICHMOND 11.· ATWOOD.
Infrinll:ement. It may not only reverse the decree and dissolve the Inj'lDctlon, but may als6 vacate the order for an accounting, and order tb,e bill dism,ssed, thus rendering such a decree as the lower court should have rendered on the whole case. Jones Co. v. Munger, etc., Co., 50 Fed. Rep. 785,1 C. C. A.ll68, disappr.oved.
Appelll from the Circuit Court of the United States for the District' of Massachusetts. In Equity. Bill by Benjamin S. Atwood !1gainst Charles C. Richmond for infringement of a patent. The circuit court sustained the patent. found infringement, and entered a decree for perpetual injunction and for an accounting. 47 Fed. Hep, 219. appealed. The circuit COUrt of appenls, after a hearing on the merits, reversed the decree, holding that the patent was void for want of novelty, or that, if sustainable at all, defendant had not infringed it. 48 Fed. Rep. 910. Thereafter the appellee filed a motion for a rehearing, and a petition that the question as to the construction of the patent should be certitied to the supreme court. At the hearing of this motion the court raised the question as to its jurisdiction to entertain an appealllt the stage which the case had reached bt'low, and as to the form of its mandate, to wit, whether it should simply order that the decree for an injunction be reversed, or should direct that the bill be dismissed; and upon these questioosleave was given the appellant to file a brief. Reversed, injunction vaoated, and bill ordered dismissed. Frederick P·. Ji1WI., William K. Richclrdson, and James J. Storraw, Jr., for apPellant. Thl1 "Aetto establish eircllit courts of apreals," printf'd in 138'U. S. 709,1 in section 6. that" the Circuit courts of apI,eals esti.blish by this ll act shall appt'tlate .ittriSllictioll to reView. hy appeal or by writ of erl'Clr, final decision in the Ilistric,t court anel theexistwg circuit cOllrts," (inaH excell!. certain cases,} and that "the judglllents 01' deert'es of the circuit courts of app als Shall hetio"l * * * in all cases arising IIl!dt'r the pat!'llt laws." Section 7 proVides that" where, upona. hl'aringiu I'quity ill a district court, or in an pXisting circuit court, an inj unction shall ue granted 01' continued by an ordl'r·ortlecrl'e, ini< a calise in wl,:ich an appeal from a final decree may he taken nnder the prOVisions of this lIet to til" cil'cuit ('ourt of appl'als, an' appeal may·he taken from sllch illterloc'lItoryorder 01' grautin/ot (If cont,nuillgsuch injlllle·tion to the dlcllit cOllrt ofappl'als." This statule (as will be more fuily set f"rth in the cOllsiderations upon the statlite hereto, annexed) proviues au appl'al I rom an intl'rlocutory decl'!'e of th!' circllit cOUit granting an iIljun, tion and referring the 1]'l4'st,on uf dllmages and pmlilS tu a IlJllster. l:!uch 11 dl'tree is maue aftl'r final heal'iug 1I1,on the pleauings and prout's, and'the mel'its of the causl' bet ween the partit's are fully (h·tel'luin,·d therehy. lfupon appeal the court of appeals. ha\'ing before it the entire case, is of opinloll that the patent is invalid 01' has notlJeen iufringl'd. the court will follllw the practice of the sUlm'mtlcllul't Of the United ::;tat..sinrt'vl·rsiug It tina! dpcr...e lIf the circtWt court, and will send a mandatl' to the circuit cuurt directing that the hill be di!\misst'd. 'rile invariaule order of the supreme cUlirt in reversing a final decree of the cireuit court sustaining It bill for int'l'ill/{ellll'llt 01' Il:'tt... rs is: ".'fhe decree is rewrsed, and the causel'tlUlanutld, with a direction to UJllblll of complaint, with costs. " . 11 C. C. A. ilL
FEDERAL REPORTER,
cases which show the uniform practice: 135 U. S. 227-231, 10 sup 'ct. Rep, 822; Yale .· Lock 00. v. Berkshire Nat. Bank, 135 U. S. 342-403,.10 Sup. Ct. Rep. 884: Burt v. E'vory, 133 U. S. 349-359, 10 Sup. Ct. Rep. 394; MeGorm{c/fy.§;1'aha/f(I,'s Adm'", 129 U. 1-19,9 l'3up. Ct. Rep. 213; Brewing Go. Gottfried, 128 U. S. 158 -170, 9 Sup. Ct. Rep. 83. The mandate sent to court corresponds to this order.. See the papers on lile in E'vory v. etItfity docket of this circuit, case No.2, 753, which shows the form of suoh .' mandate. the act to establish circuit court, of appeals, in section 10, qll appeal. a case coming from a district or circuit court is ,tllecircllit court of appeals in a case in which the decision of the cirp,lIitcourt of apppals "such caseshall be remanded to thesaid court fOl' proceedings, to be'there taken in ande'oflsuch'determination.'" Under this section. where im appeal taken from .. n: interlocutory decre8dgranting ari injunction, and it is determinpd qpo»., ji,heime'lllts by the clrcuitcourt of :appeals that the patent is in valid. or" no in fl'ingement.! orI, in general·· that the complainant's, bill calln,op pe thedecfee 0' ,tb,e circuitcqurt .must pe reversed, and the cause to that court. with. a direction to dismiss the bill of complhint: wit)'r casts: 'following till!. pi'acticeof the' court. Inasmuch the circuit court granting the injundtlon was made upon 1ltwl.hearillg'iBnd tbe appellatfJ court deCided upon all the pleadings and proofs it would obviously be insufficient to reverse the decree. only ,so far.aa it injH:11ction. apd, remand the case to circuit C()urt ' with dlr,e?tions ?nly to entei' a denying. an tlon. .rL'he appeIl-ate court has deCIded upon the merits that the bIll cannot be sllstained, and any action by the circuit court, except to dismiss the bill, I WGlJlll be reyerlleP again by the court of appeals. : ,I}eferenceto practice in such jurisdictions as allow an decrees or orders, granting injunctions and other relief,/ihqws that tile appellate court, when it has the entire case hefore it, of the entire case wQenever it Call ,do so, and will instruct ,Co\lrt to enter .such.a decree as will put an end to the controWe notl! t\1e date of :each case'iaa,shewing how long the practice has 'l\een,i!lJe\tled. .,,:. ' Xorl\ (p,li'ior to the Code) aij; appeal was allowable from an interloc.decree Qr or<ler,and the practice. expressly settled that on an appeal IlJl order the court'iof, ap.pealswould determine finally between the merits Ofl tile case were fUlly before it, as will Le s,llen New Y:ork:cases. i/"Je G'lI-ffi v. I Joh:ns. (1800.) Tbe chancellor had order, after ,tbeeY;idence had been taken in II cause, qlade,lul tQ a,jury to try: tbe fact· of fraud. The highest court of tllll,:Btate. from thisintflrlooutory order,decided that a previous at binding, and ,the bill of complaint .· ,The oase.. wasvery elaborately argued, and thtl jU!Jg6fl,d.fli seriatim. .. ' i ·."J .,jsays, (page 499;) have also no doubt that this court mt\y pr&p<wd lfur.bl}Elr" ill appear that Cihe: merits. are fUlly in its possessiQD,and parties". 'L'hat.such is the power and frequently of ,the.I.l?lIse of lords in England is evident from the cases which h.l1r.q,!trl;l1!-: .. . . . : ., , .' KEN'l'. J .· holds, (page 508:) "It is the settled rule of the house of lords in England upon appeals always to give such a decree as the court below ought to have given, This is the great and leading maxim in their system qf, IIp-
st:'f.J"
,'trJ'nr'l·. B"ttnswiek,
i
RICItMoNDl1; ATWOOD.
13
pellate jurisprudence, a.nd instances are accordingly very freqnellt in which the lords, on' appeals from interlocutory orders in chancery, have reversed the order, and decided fully on the merits." , See, also, LANSINGi C. J., 521. The judges referred to the house of lords cases very fully, and pointed out the idleness of sending back a case for further action by the chanc\'lIor, when the entire merits are before tbe court on appeal. It was accordingly ordered that the interlocutory order should be reversed, and that the bill should be dismissed. Bush Y. LiVingston, 2 Caines, Cas. 66, (1805.) This was similarlyan ap· pllal from an interlocutory order of the chancellor after the evidence had been taken.'rhe order was reversed, and an order entered disposing of the case. The court referred to the preceding case, and says that the COllrt in that case directed the complainant's bill to be dismissed "on precedents from the proceedings of the house of lords of England on appeals from chancery, and be-cause the whole medis of the case were before the court; When it is considered that there can be no further proofs in the cause, that the whole merits have been discnssed and reviewed, and that it will save litigation and ex· pense, lam Ulyself contented to be bound with the precedent which has been made."'See, also. to the same effect, Bebee v. Bank, 1 Johns. 529, (1806.) Thetlameis the 'practice In the New .Jersey court of equity, where an appeal lies from an interlocutory decree granting an injunction. ' Newark & N. Y. R. Co.v. Mayo1', etc., 23 N. J,Eq.515, (1872.) The court points ()nt. discussing the English and New York cases, the appellate court will dis. pose of the entire controversy betweeh the parties: "The general rule is that the appellaLecourt will'render such jUdgment as the inferior court, under allthe'circumstances, should'have given." . ' In England this principle' is so wellSettllidtMt it is not discussed at all in the' books; 'but is found to be the unquestioned ptactice fromihe'eal'liest times. Among the early cases IIfthehouse of lords, cited by Mr. ,Chancellor KENT, are the following: (}ove1"nors, etc., v. Swan. 5 Brown, ParI, 429, (1760.) Upon an appeal from an interlocutory ord-er of the chancellor, it was "ordered and adjUdged that the decree complained of should be reversed, and that the respondent's bill should be dismissed." See, to the same effect, Ellis v. Be. gmve, 7 Brown. ParI. Cas. 331, Bottehie1' v. Taylor, 4 Brown, Parl. Cas. 708, (1 , Similar caseS onappealfrom intedocutorydecrees,where the house of lords reversed the decree and made an orderterminating the controversy. remitting the case to the court of chancery to CatTy out the decree, are as tollows: White v. Lightbume, 4 Brown', ParI. Cas. IlH, (1722:) Attorney (}eneral v. WaU, Id.665, (1760;) B"'ribbl'ehUl v. Brett, Id.144, (1703.) Numerous other cases to the same effect can be discovered in the English books. McOan v.· 0' Fe1'. rall, 8 Clark & 30,(1841.) , This decision of tht' house of lords shows what their well-established practice is. The case came lip upon appeal from a complicated decree in Ireland with which thehousti of lords did not agree, 'rhe lord chancellor pointed out that the usual course onhe Muse of lords was "to declare the ()n the decree is to be founded.' and to refer it back to the court to carry it into execution.'" Bilt he pointed out that sometimes mistakes were' made by the lower courts in 'complicated cases. "I think it more expedient and mote calculated' to save expense'to the parties that this house in making its order should'frame the decreein such a manner as to prevent the necessity of any further· to the court below. " Accordingly the' house of lords madeatiery long ord!!", declarihg to what decree the complainatrtswere en. t'itlled, ordering'thaV'tbe cause be remitted to the cOlltt of chancery of Ireland to make a decree conformable to the abOve'declatation,'andt,O'earry these directions intO effierdt."!' .": : " . , ,
were, ,all tkcided ,,"cl.s,anjl, iJsivefy. ,practice,pf, 9t ,equity in cases where appeals from l1re Thisnr!'Pbice Q,f thEl.Eng/'1I11 Chllncery be,'pllowed by th,is couft../ · Rev, St.! U,. S. § forms pt:I11esne and and ,modes ()f ,"" '" in ,the circllitluld,dijptrM COllrts, b,elqng to courts shall be accQl:ding ,to the. pri nr:jp!t>s., rulcs. and usages of eqUity. "" I/< I/< except isotherwistl prQv,i\leq, b:» sti1tl1te 01' by rules of COUl't. made in ndlll' is wt'll setcOllrt ,WHI "oooptthe prin<;iples, fules, anq usages tled that of the COUl;t of l;hancery or VqUieT v. Hinde. 7 Pet. 253-274; l.1ein v. He.atli,12110w. ,And this pl'iJlcjple is now tlmbqdied in an express rUle of the supreme comt of thtl ..s. Equityrl1!e90, Accordingly this court,IIP"n an appeul frum an interlocutory dlicl't'\e,granting all tile meritlj"ptthe I'ase It, w,ilIpllOOeeQ tinally to dilijpose of the Cilse, and will rewand t,becase w.th a directilln tQdismisi:l the bill of Clllllif. i,lI op,inion of ,the I\ppallate court, tl;e sllltca,nnQt be of theltr,lt, inestahl.illiung tl\e al'ptlilate cOllrt and to sullors, and is best attained by a mandate Whicb will an.y unnect'ssarYProl'e6llings In the cOllrt lIelll\\,,, !,!, " in eachcai:le cOllrt belowJq make the or<ler or d,ecr':'!3,which it should the facts betol'!f, it. ,1f,the appelll is order grantinlr II injun<'tlon, an,1 l;911ret; is of opini,oJ), "t!lat, Ihe \alidlty of tIle doubtful, ur will not be irrl'parably damuged lIy waitjpg'lllltillinal btlfjrjng.1tw,lI direct the below 10 rescin,l Ille ortl!lJ' grallting a then the f"r fi.n,alllt'a.. appeal is HOlll al,Jnterloclltory dt'cree lUI injun,ctilln. anti tJlilij, court is ofllpinioll that tilt' billcannQt be thell it cQll.l't Ilelow to dill/lli,s ,the bill. Inbllth cases ,lI,re put in tile llitlll;lt,i,on "which they,\\'ou!d uCQUPJ' if tile c.JIIrL bt'_ opillioll of the appdlaLe court, and tb!' p1t:tin oft/l!l !:itatute., .
ConSiderations upon the jurisdicU6n of thfscourt under statute. ,JV,e'have ht'en reqnefted bythll,coul't to snbmit,a short hrier'bl'al'ing upon of the 8tututl;' in '1lf1lxj,1ing for aD,aHpeal from "illl'erlocntury or gl'lmting <lr an hlj ullction. " l)ee section. 7 of the cm:uj t, COil rls or;lU!pellJs, a!Jovt' q,llOll:ltl. , '. The inll'ntion of, yongress .in paslling Lhu stlction of the statute is made plain l,',}' ..l 11;8 .folio I\" iI1g . It Wat! l"ng" HgO st'tll"d that the 1111 prerne rourt hl\d no jUl'iSllh;tinll to enteranappealfr(jlu8 Ilt'al'in,g gl'llnting 81'1 injulI.ctj<lIl, and recause to ",.!Illlslt'r .fIll" an /lccount. either ill, PlJttlnt callst' or in for ,sllch IS,.onl,V "interluclltory," The ofaccou\lLinghad to ut' gOlle through t,he lina.l(jt!l;ree. repolt, ente.l"t'I,l".I'llfqrll an By lIte ..s, § 692,) thesUI,rl;'mj:' decret's." , :. :",J,.\1 chancpl',y,eonrLs differs of be taken 11 rig!ht: of· propr5" """,' .,B,f.1t. . ' l,];nitpd tIll!: 11,l,"W ,to liniU. ,i . " , ; , . / , , ' .
And it has thtlrefore been held in frequent
<'L'"
h""
RICHMOND
ATWOOD··: ;
15
no jurisdiction, under t'18' aets of eongress, to entertain' an appeal an "interlocutory decree." ,The 'cases are cited and very, fully in" Iron C('.C'V', 1IfaHin, 132' U;! 8. '91; 10 Sup. Ct. Rep. :52.' Iii this case the decree grarittllHm: injunctiourtnd 'ordered a reference to a muster for an account. The court held 'thl\t' the decree w,as not a final and appealable one; SO'in 135 U. 8.232, 10 Sup. Ct. Rep. 745, it was held tllata decrees'etting aside a sale and appointing a receiver" was interlocutory, and not final." Inacrordance with the preceding cases it has been expressly held that an appeal will not !ie,to the supreme' conrt from a decree for a perpetualinjunction in a patent cause, 'with reference to a master to take accounts, such being interlocutory, and not final. See Barna1·dv. (fib.Yon, 7 lIqw. 65U; Humiston v. Bti:tirtthorp, 2 Wall. 106; Railroad Co. v. Soutter, Id. 51052H·,' , Under this statutory limitation of the jurisdiction of the supreme court" it ofterl happens that great hardship is caused to a defendant, against whom an erroneoUs, decree is rendt'red at final hearing by the circuit conrt, in that he is put Wthe useless expense of a generally accounting before a nlastel', and is kept dui'lll"g'all this period under aninjunctioll, (the well-establlsllli(j practice being that the injdnction sta:ndsnntil the appeal is decided.) Thl; Blipreme Court Reports areful! ofcaseB like Clark ,1'hriJad Co. v Wll· Linen 00.,140 U.8. 481; 48Z. 118up. CtRep. 846., In this case tbedecree,infavor'of the pl\tent was rendered Thept'riod from June 17; 1886, was cOD!lumediri in the masin the exceptions to tile reporl, at the ,end of which'.time damagt's t9 the of over $11\0.000 were awarded by fina1 decree of the ,circuit court. Thllsa period of6'verseven years elapsed, the defendant was uUder injunction, anli vast amouri,ts were consumed In legal The case then went up to the snpreme c\>ui't, the decree' of the circuit court, and ordered that the bili should be dis01l8Soo I . . only one example of many to be found hi the Supreme ConrtReportsDf the great byinability to take an appeal at once from the decl'enustaining the plltent'and granting the injunction. No c01DpensaUon e<I'uld ever be awaJlded to the defentlant in .the above case for being unjustly deprived by injuncLionof the use of a valuable construction forsenn yeai'l;l. !fie'll' could anyo£ thiHllrge sums expended in useless fees during accounting be recovered·. This hardshiphaslong been,a matter of complaint amollK the members of the bar who practice in patent cases; and It was'a cause of general satisfaction that congress, in section 7 of this act, had atwas supposed by the bar. to remedy this hardship by allowing to be taken at once from the interlocutory decree granting the injunction. , It may seem the court that this general undt'rstanding amollg the, fuemhers of the bar should have some wl'ight in the matter, and· upon grou"Dds'of pUll1ic policy it is certainly desirable that the statute should be gi\'en this construction, if compatible with the intention of congress 8!ldthe langtlage of the statute; , ,... We submit that there'can be little do.ubt of the intention of congress.' The evil complained of was tile great delay Of l\ppeals during the accounting before master. Toi nterpret the statu'teas referring only to orders grn.nting a'preliminaryinjunction would be to take away the chief benelit of'tli'estatute.'; In the first place, ·preliminary injunctions 8.reseldom asked for, now that it is well established that the court' will onlY' grant sucn injunction in case&wherethete has ,been a prior adj udieation or acquiescence or some speHal eqult'i lind Where the' oourt is reasonably free from doubt. Furthermore, ,i[)! 6uth 'cases, thecoul.'t will oftendissolve the preliminary injunction upon
I
FEDJl1RAL lU:PORTER"
the filing a bond. And again, the cause,/if:!!1 berQ.pidly pUl'lbtl(tp Anal hearing Py defendant. So that the ,hl,lor4¥1lip arising f,rom i!jabiUty to appeal from an order prelimi!1aryiojunction i$ slight,: to the ha11lship arising from the inability to appeal from an a perpetual injunction. , . It ,i,8 .:well that tbl'l CQurt, in construing a statute, wilJ endeavor to carry of and will consider the which led to the passing of the statute. Platt v. Railroa(l Co., 99 U. S. 48-64; l(ohlsaat!y" Mur:phy. 96 U. 8, l53..,J60;Heyde11/'eldt v. Gold & Min. Co.· l1anks, 23 Wall. 307-019; U. S.v. Freeman, 3 Wilkinson, 2 Pet. 627-662;U. S. v.Wtltbl!rger, 5 ,)jrpum, v., 3 Dall. ,lIt l$,tflerefore clear thattbis,court ,should look at the hardship which .this section was pasaed to remedy, and that the intention of congress should be carrieli\,PMtin COJ1gress certuinly i,atenlled to pro. a in injunctioll,atfinal heal'. ... 'rl:\e ,rev,ie. ,":H.ed . . pe.llate ..oourt b .· long.. d .. the master is. completed. l!<Sj/l estab· ofJhe of c\lanceryand many equIty courts. , Illeaning Rf the language the statute is orderC;>f QfC()ntinuing ,an This ,i, to be to its us,ual . of constructi,tW; given jt .a.p3IJof tbMtWrl1s meaningless:. Railroad (lqj t'V;, }21 U. S. 7. Ct.:IlePl'JlS34; The Abbotsford, 98,p-. 8.:4.:W444,; ,¥:lJ;iZ!q,rd y. Lawrence, 16 v. Co. v.,lJqffman,.101V·,S·.l12-,115. , .. .. .e . .. . . tru.ction, we.submit th.at. the be no doupt aa.tQtheJAeaning of the here in question. The "interonly reft);r thl'l0rder of the cQurt granting,p. pl'eliminary injunctIOn upon affidavits. This ill never properly spoken of a!l;3 decree, almay ,bft .found the wordl'decrelJ" is incorrectly useq qr4Elr. , 9n fhel)ther .. ;hewords "interlocutory decree" refliW COUtts, to the decree on tbemerits at which is. and the casei!! referred to a :l;v,cQunt or likf! proceeding/!. ,". ' .,1ftbeju,r,l,sPJction of should. be limited under this section to ap,>" ',·It. ; ;. ., . ' 1p
..als.f . ysuperfiuous, ..,I),. . . come . J;w.n.'.%II"''.r. .e.(i#l..I."n.arY.i.llJU... 9.t.iO.n., the W.Old.S '.· Ocdec.fee.·...'.· l".n.'B.e c.t.io.n 7, bemcorrect. . . '. , We the of the supreme court of.the I)'.niteqStates. The dltrenmce.between the three different determinations of· the court of t')quity in of a suit, namely, "preliminary injuncti9D," utory dec,ree.,BJ!,d "final decree." is well shown in WQrd.en v. Seq,rls, 121 U. SQp. Ct, Rep. 814. This \fas a bill in equity uponMte.f1l patand the court distinguishes very clearly. as follows: ".A preliminary inand served. '" ... ... mude, declaring that the reissue was valid, and had been infring,ep, ,and awarding a a rE!ferenceastQ profits andd;,tq:Jagtjls,. '" '" * On t,he On t.he reference under the inteI}ocqtory decree, a tbat plaintiffs recover." etc" ,',> . lnZ,orll16 v. cIted. whel'e. the court. dismisFJ!ld, as not being itiexpressly lleld that the de<;ree ".was interlocutory and ,!-ot, even thoughl equities oUhe .'. In Beebev.,Russell.l9 Ho,w. 283-285"the circuit court bad that cerlaln cOj1vilyaw;e/lllhoUld be. the case tQ tile ,The,clllI,rt cMslJ;l.i,ssedthe appeal, holding: was not from a final decree,
RICHMO.:iD V. ATWOOD.
17
saying that no case had been decided by the supreme court "in which the distinction between final and interlocutory decree has not "been regarded as it was meant to be by the legislation of congress, and as it was understood by the courts in Engla.nd and this country. before congress acted upon the subject. 'A decree is understood ,to be interlocutory whenever an inquiry as to matter of law or fact is directed, preparatory toa final decision." So, also, in Perkins v. Foumiquet,14 How. 313-323, the court distinguishes clearly between an "interlocutory decree," referring the case to a mastel to take anacconnt. and a "final decree" fora stated sum. 'Ihorder to ascertain what was the settled meaning of a.n "interlocutory decree granting an injunction" in patent we have looked through the TJ:nitedp,tates Reports as far. back as 128, U. S., and we find the follOWing patentooses in which a decree. at final hearing, ordering an injunction and referring the case to a master for an accounting', is expressly spoken of a$ an "interloeutory. decree," while the decree. ba$ed on the master's report is called the "finaldecree. " We bave not IOQked any further. but do not doubt that the cases can be indefinitely increBlle.d. Our citations are sufficient to $how the established meaning of;this phral'le. . In Magdwanv. Packing Vo., 141 U. S. 332-337, 12 Sup. Ct. Rep. 71. the court says: "Issue being joined. proofs were taken, and the case was: beard before JUdge NIXON, then the districtjudge, who entered an interlocutory decree in favor of the plaintiff for an account of profits and damages and a perpetual injunction. If: 'Ii ... On the report of the master, ... ... ... a 6nal decree'was entered. to 1n McOreary v. Canal Co" 141 U. S. 459, 460,12 Sup. Ct. Rep. 40, it is said: ·ti(Jpon the hearing in the' circuit court, an interlocutory decree was entered infavcmof the plaintiff, 6ndinR the validity of the patent, and the infringement by the defendant, and ordering a referenr6 to a master for an aCc;lount." In Bt.6ermain v. Brunswick, 135,U;.S. 227, 228,10 Sup. Ct. Rep. 822, it ituaid:.: "Heplication having been ,filed, proofs were taken, and an interlocutory decree was entered in favor of the complainant, sustaining tbe patent,· finding that tbere had been infringement, and referring the case to a master." In Yale Lock Mamif'g 00. v. Berkshire Nat. Bank, 135 U. S. 342-344, 10 Sup. Ot. Rep. 884, thll court says: "After replication, proofs were taken on both .sines.and the case wal'l heard. ... ... ... An interlocutory decree was entered,. adjUdging reissue No. 1::1,550· to be valid, tbat the had infringed those claims, and ordering a reference to a master to take an account." ,In Gomely v. Ma,rckwald, 131 U. S.159, 160,9 Sup. Ct. Rep. 744, the court says: "There was an interlocutory decree for the plaintiff. establishing the validity of tbe patent and its infringement, and ordering a reference to a master to take an account of profits and In, Oollins Co. v. Ooes, 130 U. S. 56-64, 9 Sup. Ct. Rep. 514, it is said: "The circuit court originally granted an interlocutory decree in favor of the plaintiff. in accordance with tbe opinion of JUdge LoWELL. ... ... If: But a rehearing was afterwards moved for and granted, the interlocutory deCl"ee vacated, and· the bill dismissed." In Hurlbut v. Schillinger. 130 U. S. 456-458. 9 Sup. Ct. Rep. 584,the court says: "Issue haVing been joined, proofs were taken on both sides, and ... If: * the court entered an interlocutory decree, adjudging that the reissued patent was valid, that the defendant had infringed it. ... ... ... The decree also 01'dereds reference to a mastetto take.an account of tbe profits and damages." In McCormick v. Graham's .ddm'r, 129U. S.l, 2, 9 Sup. Ct. Eep. 213, the court says: "After issue joined, proofs'were taken 00 both sides, and ... ...··ilI the court made aD interlocutory decree, holding the patent to be
v.52F.no.1-2
18
FEDERALR£POR'l'BR'I'VOl.
52.
itsftrst and second claillis,decteeing had 'dalIns. and refeJiringit to a master to,taka an ac'Rrid damage8." ,,' , ' " I ':. ': 'Oo.v. U. S. 1'58....163.9 $up.Ct; Uep.·83. it is was entered··tlolding the patent ,to be valid as toclaimsonellild two; and'to have beenihifrlnged as "to ,those claims. and master to take' an account of prolits and damages." Tbiedlstlln'ction is also clearly pointed ant in the case of Potter v· Mack. 3 Fish. Pat. Cas. 428. ina decision by Mr.,Jl18tice 8WAYNE, of the snpreme couH;;'" :'I"bie. case isa leading, cQseupotl'the'·proposltionthat aninjullctlon suspendi'd dUring,theproceetl1ngl 'before the mastt'r. Here a de· cree' had heeii made for :a'perpetnl\l'inj unction.: and di-recti nganaccou nting. An ap,p1telit'iJn was made tlVdt'thElinjunction,shonld be suspende1t until lillal "He cannot appeal from the de· creejHr it"-llt present stands; 'because, although the decision is' 6,naLas to the merits ()f:tbe :Case, Uis iU'rdrm l an'intllrlo(lUtol'y decrE!le only, Hnd': the rule estabUshed'hy llbe lIr1prem6 icotnt'tllthatlart<appeal can be taken 'ollly frOnt a final ".... ,An and notice of the injunction' iIlllB Now. we ,ar&&llkt!li to sus· pend !tlle tllill: lWjUnetton nnUl 'a 'tim\! ,deoree :ilt imade." ,' weuidlteCer: W the 'established meanmg oftheae words, all seti '" ' :: : , , ! " , ), tled bytbetext-bouks. In '1'alit; Pt\t;'§§ 644LM9, ,the: distlnooldn iii lntp.rlocu. tory decree inan patent case is a decree which adjlldgesthatthe patio entsued u'pbn ilsvlllrd, and: itliat:tbedeferidlml.. hall snd that a tmtster iu'C!lltueel'Y takei\1fld'report anltoool1i1tof,the profits., ", ., ... and of the'danlagelii:,' Ill, and,. ,sometilll4s ",that' the defendant be, perma. )fl'om fUMbe'r "'Noll.Mleal' from such aueeree lies to a flria.hieer.e'e'has'been made, for, a specific money' tn pursuati'ee ()! an lkeotmtof profits'and; damages, the case iswithin:tbi:f'et>tttJrol,{jftllftileburt.'" ,',!' ,. ii,' i' The saine> teltt-!t:I()ok Bltbwll tbat thl'gralit of &' preliiminaryinjunction is not of .Ils/\ at all. Walk. Pat. §§ 658-662. See. also. section 698: ".A refiIsal 'of aperm&uent injullct'fun/will generally follow from the fact that the flatent has 6xpiredat:the time of the intel'16cutory, decree." , ," 1132, 'Is equallyclellinon tbis SUbject. .. An interlocu. tory dpcree is&' decree to' favor of tbep1liibtiff llponthe i:lsues created by the bi1land a.h8wetpl.ndreferring ithecaus&'toamaster in'chKncE'ry for an aecount of profits and an a\Vard ofdamllges. , . * * .A final decree isa decreew'hicfltermtOates the litlgatiott"either.! by awarding, to ,the plaintiff the pl'olUs,'diimages,and other'l:!lll'manellt rehel. to whichhe -is entitled, or by deits!tneYiEsin favor,of the, '. :The final decree for the plaintiff cannot be where aniaceount ienecessal'Y until tha ac, eount has been taken bYitbe master/antLreportea to and, accepted by the ' I",: " TIle above Cit.ations seem/to Bhow I oonel naively IW bllit is' ,the established meanlngof:tlle 'words ." In the :08SO: at bar the court certainly, entered a decree, from which an appeal wll8takil\l;and ,this decree eertainlygrantedan injlincthlfl.' There can lie no dispute,about that. And, furthermore, ,ft'was an II interlocutory,decre!!, II ae settled. not only by't'he calJl'sld!love dited,btlt :by the Calles of' Bamard:t·· Gibso.n,7 How. 650. Bt'aintharp" 2 Wllit :106, in whichtlit: was expressly held Ullit adficrelfin"l\ patent cause,' ishahle from the decree here appealedfrot:h,'was,bot a,fln'al decree. ,In both cues the court Iill1td:"The,decree is not :,'..:" ',,; .As the decree ill tbfi'oase tberefol'(!, was aU ,II interloc\ltory decree, "
q
*" *
BICHH?ND 'lI. ATWOOD.,
19
and gt'anted an injunction," it.!8 a case iWhich come8.,within the eXflress language of section 7 of the statute, and also Within the intention of congress, as above set forth. As to the jurisdiction of the court in this particular case, we submit that there Can be no question. FOI' certainly the circuit court has entered a de· cree: if this decree is an "interlocutory decree," the court plainly has jurisdiction uncl.er section 7 of the statute, as the cll'cree grants an inj'IDction. If, on the other. hand, this decree is a "final decrbe." then thl' COUI t has, of (,Oil rse, jurisdiction untlel' section 6 of the ad, which '))a),es this cuurt an appellate court, with jurisdiction "to review by appl'ai Jr by writ of error final decisiems of th... district court and the existing citcuit courts." The dl'creeol' the circuit conrt in thiS casE' must be of either one kind or the other, for there are nootller kinds of decrees known to the law. WI' have pointl'd out al,o\'e that in pate!lt causes these are the only kinds of dl'crees, and the fact is also established by tile best text-books upon generall'quity practice. III Danie)I's eh. Pro (5th Ed.) it is said: "A decree is a sentence or order of tI.e cOllrt, pronounced 011 hearing and understaI1ding all the pOints in "issue, and determllling the right of nil the partil's to the suit according to eqnityand good conscienct'. It is either intl'rlocutory or finnl. An interlocutory decree is when the consideration of the prillcipalquestion to be determined, or the further consideration of the cause genel'ally, is reserved until II future Iwaring." This text-book, on 1671··1673, further makes it plain that the granting by the court 'of a preliminary injunctiOlJ upon IItlldavits is not a "tleeree" at all, (as we pointed out above,) but iii "an ordl'r for an Injunctilln." It is said. on pllg'e167!}: "An injunction "bich has bl'engrllntt'u on an interlocutory apJllkatiun is superseded hy the d"cl'ee ,uada at the hearing uf the cause. The iujullction may be permanently continued, 01' made perpetual, by the decree." Story, Eg. PI. (10th Ed.) 408a, also distinguishes between final and interlocutory "ecrees. Dl'ci'et's, (4th Ed,) p. 2, which is the work upon litis suhject, says: "Deel'eps ara either final or interluculory."l;u, also. in Fost. l!'etI; PI'. § 3U3, it is said: "Decrees are either Jinal ur interlocutorv." Thus via data,tha conrt has juris,liction to entertain this appeal. It app.'arB from the rl'curd, n, tI,al the circuit court entereu a "decrl'e fur 'perpetual injun('tllln, and for an accounting," froll! which t1I'cr"e tht'def..ndantappealed. If the df-cree was nllal. the court plaiuh' has jnrisdictIon, nudet· sedion60f the statute. If the decl't'e was interlucutorv, it has jllrisdiction, undersectioll 7. We helieve, however, that, upun cOllsi"',"ralion of tlltl lIutiloriti..s above citpd. tI'is court will have nu doubt that this cause is one of those wliic'l was eX}Jrdlsly intended by congress to oe oy section 7, ot' the statute. NOTE. We have not searcl1ed the Federal Reporter for the nsp. of the words "interlocutory dl'cree," because of the lahor invlJlvl'd. We will call IlltelltilJn to Sarldlel:o.v. SmUll, 3!:! It.. p. 414. 416, whf're.J IIdg-e SJIIPMAN says: "Let tlwre hI" an interlocutory decree fill' an injunctionalltl all accounting." Many other like cases could dOllotless oe found.
Pay8m/.: $. Tucker and· Judges.'
F·.PetkiTl8, .for appellee. and CARPENTER and ALDRICH, District . . .
Judge: . The· opinion orthis court', Cou, circuit judge, was rendered upon the general merits involved" February
FEDERAL' REPORTER, 'Vol.
'52.
2, In5 tJ/$;' Rep. 910, 1 C. C. A. 144,' (1st Circuit) and isnow'beforeus'upWn;a, mofiorifor reb'earing,tlnd a petHion,tbll.t theqpestions of metitbe ,oertffied, to the BupreDle court. Upon reargument ofthe foregoing motion, the questioI;l is raised as to the right of this court to entertain an appeal at the stage of the proceeding reached in this cause; and, in the event that jurisdiction exists, the further question is presented whether the mandate of this,colirt should direct disposition of the cause in. the court below. After. considering thehriefs and rearguments, we find no reason for the conclusion stated in the former opinion as to th'e"tnerits; and the motion for a reheating and the 'petition for certificationtQ the supremeitJourt are denied,; and We do nbtfeel called upon to. to the, reasons already stated upon thi's' braHch of the case. , '. , , of jurisdiction and seape of mandate, however,not havraised the tfumer argllmentS,or coDsideredinthe,opinion, ing s'eetn'tldt'only to deriuihdotir attention, but thatweshblild' State OUf SOBle length. ' ' Section 7:,. ,of the act of March, 8.1891. creating the :cfrclflt court of appeals,.. ,. ' upon a hearing in equity in a district court, or in an excourt, an injunction shltll be granted or: continued, by an' interlocutory order or in a 'cause in which anI appeal ftotu ,a final tiecreemllybe w.ken lfnder theprovisiolls of this the circuit court may he taken from such de" of cree continUing such injunction to the cir,Quit court of apioorderthat such right of appeal should be. the more highly ,remedial in favor of the part}: it further provided, that "it shall take precedence in'the appellate court. "1 in the Ofcop,rse, in ou,r ej)deal'or to ascer.tain the mearHng ()f this section of in mind that, prior to' an ap, the peal from I an interlocutol'yinj unction. order was unl\nown in the federal courts. Having in viewj"therefore,this role of law and the plain lan, guageofthe'statute; considering also that the purpose of the lawmaker, plainly'exp\:essed, wilA to give anght of appeal, not conferred by the prov:i$ic;ms of as to appeals from. fil1al decisibn,Lit seemstQ t4&,l.tJt,was int!)nded to remove'the,'restrictiOli,and extend the' right to Illt:thai classofinterlo,cutory. qrders or decre.es which ,interf&'l'ew:iththeposSes&ion of prdperty, or operate in restraint :of a party's business. Since Sir at least, decrees and orders in to 'di'lisio,n,and hlYveb¢en eitber as final or interlocutory decrees or 'and an "interlocutory decree It has been repeatedly defined as any'decree maqE! lleforetln!').l decieipII,I and., for the purpose of al;lcectaining matter
on
,..
;"
"
,.
"/:':
· BICHMOND. !/. ATWOOD.
oflaw or factpreparatoryto'a final decree. Blackstone says, (volume 2,. p. 452:) "The chancellor's decree is either interlocutory or final:" and in Harrison's Practice in Chancery, (volume 1, p. 622,) it is said that " a decree is either final or interlocutory." Again, Barb. Ch. Pro 326: "Decrees lire of two kinds,-interlocutory and final. An interlocutory decree is properly a decree pronoullced for the purpose of ascertaining matter of law or fact preparatory to a final decree."
In Seton on Decrees, (page 1,) it is said: "Decrees are either final or interlocutory. If the decree 1etel'mined. all the questions in issue between the parties. and did not adjourn any matter for further consideration, it was caliI'd a ·tinal decree.' In strictness, however, .a decree was said to be 'interlocutory' until it was s'gned and For. Rom. 183. But ordinarily'it has been termed' interlocutory' when .it was pronounced for the purpose of ascertaining matter of law or of fact pre"i. ously to a tinal decree." . , " .
It is quite clear' that this single of decrees into two: and two only, interlocutory and final,has been generally accented 'by . lawyers and judges in this country and England. 1 Newl. Ch. Pl'. 322; Seton, Decrees, 2;' Kerr, Inj. 11, 12; High, Inj.§!.1694;· Adams,Eq. 375; Daniell, Ch. Pro 986; Fost. Fed. Pro §318; Walk. Pat. §§644, B49; Rob. Pat. §§ 1131, 1132; 2 Madd. Ch.462; Kane V. Whittick, 8 Wend. 224; .Jenkinsv. Wild, 14 Wend. 539; Forgay.v. Conrad, 6 How. 201; Barnard v. Gibson, 7 How. 650; Perkins v. ,Pourniquet, 14 How. 313; Beebe v. Russell, 19 How. 283; Humiston V. Stainthorp, 2 Wall. 106; Railroad Co. v. Sautter, 2 Wall. 510, 521; Worden V. Searls, 121 U. 8. 14, 7 Sup. Ct. Rep. 814; Brewing CO. V. Gottfried, 128 U. S. 158, 163, 9 Sup. Ct. Rep. 83; McCormick V. Graham's Adm'r, 129 U. S. 1,2,9 Sup. ,Ct. Rep. 213; Hurlbut v. SchiUinger, 130 U. S. 456, 458,9 Sup. Ct. Rep.. 584; Collins C.(). v: Coes, 130 U. S. 56, 64, 9 Sup. Ct. Rep. 514;. Comely V. Marckwald, 131 U. S. 159, 160, 9 Sup. Ct. Rep. 744; Iron Co. V. Martin, 132 U. S. 91, 10 Sup; Ct. Rep. 32; Lodge v. Twell, 135 U. S. 232, 10 Sup. Ct. Rep. 745; St. Germain v. Brun8'Wiclc, 135 U. S. 227, 228,10 Sup. Ct. Rep. 822; Yale Lock Manuf'g Co. v. Berkshire Nat. Bank, 135 U. S. 342,344,10 Sup. Ct. Rep. 884; Magowan v. Packing Co., 141 U. S. 333, 337, 12 Sup. Ct. Rep. 71 ; MeCreary v. Canal Co., 141 U. S. 459, 460, 12 Sup. Ct. Rep. 40; Saddle Co.v. Smith, 38 Fed. Rep. 414, 416; Potter V. Mack, 3 Fish. Pat. Cas. 428; Me Vu:kar V. Wolcott, 4Juhns. 510; Bennett v. Hetherington, 41 Iowa, 142; Morgan V. Ros6,22N. J. Eq. 583, 593. It will qe observed. from ah examination of the cases in the supreme court of the United States, that a decree in p,atent cases, declaring the patent in question valid" and that it has been infringed, and for. an .injunction and an accounting, has uniformly been Teferred to as an interlocutory. decree, and the cases are numerous, like Barnard V. Gibson,' Forgay, v. (!onrad, Humiston V. Stainthorp, Railroad Co. v.: Soutter, Beebd v. RU886ll" and Iron Co. v.' Martin, ffWpra, where, upon an appeal. from a detennining the general, property mght. ,granting. an: injunction,
:·for an before a master, it ;MS' btleo :he1d thaA: ·the deoree' Wasihot flnpl or appeala1:lhi. " I ' lteijtrue,ithat the cases in the court are, based upon a differentslatUle, land in unmisUtkable langl!1sgedeny the .right of appeal from decreel'l·. that reason none the less signifiwhat has Qeen understood as the line' between interlocutory and tinal decreeS. We must aSSume that congress used the term "interlocutory order or decree," in this connection, in its common and well-understood sense, and as intending the line of distinction accepted and interpreted by the federal courts; and it follows that all injunction orders'and decrees which were interlocutory, and not final, within the old statute, and for that rpason not appealable, are interthe new statute, arid therefore, by the same logic and reasoning., are appealable. .' 1 We think the term "mterlocutory order or decree" was used in its broadest sense, and that the purpose of was to conter the right ofappealJrolnflny decree:or order granting ariinjunction, at any stage of, the !proceeding, whether technically preliminary, interlocutory, ·or flna.l';; ,", As ,already said, we think the terin,was nsed in its broadest sense, and,iliQ,o\W:'opillion, fuU.aQOpe should be to this pro.vision of the statute, to the end that any ,party agQ;rieved by any order or decree granting an il1junction,at anystnge of the proceedings; may have a speedy remelly by appeal. It is plain that the policy iilten(led to, be emphasized 1:Iy this,sta.hUoryexception to the gelieral provision of the &tatute and the rtile of'law, lirlliting. the right of appeal to final decision, is this: that,ilB injunction otdei'uleprive partles of the possession and control of prulJerty. )arid business, ,and, in Case of error, work, irreparable mischief injusticp,the party uponwhom the order operates should have l)pportunity to have the record exan1ineabythe appellate iferroris'discovered, to ha.ve it corrected without the delay. necessarily iheident to -litigation in 1t.$ various stages before reaching finalj udgment. As thestatrite in question undertakes to introduce anew feature in federal proceilure,by conferdng tberight ofappen.l. from cHtain orders and . we h!lv.e approached 11 of its scope and effect with caution; Rnd, dn ,·jew oUbe doubt which always from entering, riew fields, it .is ,vpry grati lying to learn that the circllitootirt.ofappeals inthefilth'lbircuit has, in a similar case, adopted the same construction in a forcible opinion recE'ntly rendered by PARDEE, circuit judge, 1inl(Jones Co.' IV.' ,Munger, etc., Co., reported 50 Fed.}{.ep."V85,'lC. C. ': ! ' . The: reltunning qU(lstion ,however,dilmbretrollblesome, especially in view ol'tthe:;c<moJusion :rettcfled by the: same court, in the' same case,that the bmow ,to. the injunction order merely. Although the r.evort of\th· howftdly, the,q'ueliltion was oonsidered upon i&TgqIIJf;Dt, ,and, ,the.opi.mionpresents, no ,discussionr thereof;: :we: [to it$ weight: as:: an
1).' A'1'WOoD·.
23
but still feel bound to announce a different conclusion upon the same question. At the outset, we must notice that there are many instances where cases of this character have been belore the supreme court, upon a full record, in 'Which complete relief has not been granted. But it must be observed that the failure to afford l'eliefresultedfrom the limitation in which conferred the right of appeal from final decision the older only,"-the court, under such statutt',having no appellate jurisdiction to and furnish either partial or full relief until after final decision. The failure to make final disposition did notresult h'om a lack of power in a court having appellate jurisdiction to afford complete rt'lief, but from a total hick of jurisdIction, at such a: stage of the proceeding, to entertahl appeal, or to afford aily relief \thatevet. The former decisitlns and'practice in the .federal courts, therefore. by reason of this distinctIon, 'have no force wHatever up6n the question whether a court having statutory appellate jurisdiction to review at interlocutory stages, and having tha complete record a full hearing upon the generul merits, trUlY proceed to correct the fundamental error, and finally dispose of the case ill the manner in which it should have been disposed of in the cOurtbelowV . No practice having been adopted by the supreme court upon this the reason -stated, that heretofore the statutory right ofa.psubject, pealdid'.'ridt exist.· we get no aid from' the reported cases in that court. We must assUme that congtess, in furnishing equitable remedybyappeal, had reference to the eqUity. system as understood and practiced in England, and as adopted and applied to our own institutions; and,in determining the P?wer and the duty which result .from this legislation, we must look to the system, usage, and practice, and to the decisions ofOufstate courts,whetea similar right of appeal from such decrees has been conferred by statute. It is, of coUrse, well understood that a' court of equity is to decide on the law and fact, (Le Guen v. Gouverneur,l Johns; Cas. 500, 506;) and that an appeal in equity is an appeal upon the law and fact involved in the cause, (Adams, Eq. 375;) and that, "in absence of any restrictive clauses, every appellate tribunal is clothed with all the powers of the tribunal appealed from. and is bound to exercise them upon the same principles," (Brigg8' Petition, 29 N. H. 553;) and "ordinarily, from the nature of judgments, the decision ofan appellate tribunal must have as great force, at least, as the judg. ment of the inferior tribunal upon· the same matter would have had if no appeal had been taken," (Blake v. Orford, 64 N. H. 302,10 Atl. Rep. 117.) . Unquestionably the circuit court upon the hearinp; therein have found the facts against the complainant and dismissed the bill, and the question presented is whether this court, having an appeal before it involving the same record and the sarne. facts, may, if error is found· upon the general question ofnght, prdceedto do what the court below should have done; or shall this court, although it has examined the record, and determined the right under the patent the other way,simply dissolve the
24
RlCPORTER ,vol.
injupe"iion, permit tl1e .· to'go on, and, after the useless expense and annoyance incident to such an investigation, upon re-examitiouoLthe same record,Ji>ythe same court, put in execution the right which. nec&ssaril}! in the appeal theretofore considered ? In our view, the could in aid. the final execution of tbe·raght lllready by this court, and under such circumstances wouldiheworse than idlejand a rule which would permit such circuity and :eir,Cllllllocution is and would not be useful to either theipar.fJieSor tbe court. :NQw, this case must be distinguished from the class o {icaal'lSf where theigjnnction is.preliminary, upon the bill,'orfwh!'lretllere is onlN apl1rtial upon the or where incomplete."JH·, which ,should have been oonlliderec;l. Weare. m>t called upon to decide as to the scope of the und.ersuchQircumstancesj but it is no one WOuld.iCOQ;tend that, as an invar:lable rqle, it should .go to a final dispouponiUJ·mel'its. Deall. v.Thorne, 3 Johns. 543; HunId. 566.; ,i'. It ;probable,indee.d quiteclea,r,.that a distinction would be madei: beAween prelilllipllrilyas a. matter. of discretion, and a decree for an injunction granted upon the final dete,rminathe' general rule that an appellate court tion of· ,PI pj'Wtic.ular rightj with,iJ;ljunctionsgranted in limine as a matter of discreti,uuhollld not, in our view, apply to an statute fr()Jl),an.:interlocufpry for 8 perpetual injunction ;p,l\sed upon a of the substantial prpperty right in a patent cause. In ,the; C/lMi tinder considerlltion, the in the circuit court upon tbenierits,as, .to .the validjty and the.' i l1 fringement of the patent, was ftilhand,Cdmplete, and general property right ,was determined,so far asit:co'llld"he done. by tOa.toourt; and the;perpetual injunction, the derto $Ccount1'aud the ,of the special masier were based upbn such: determination,o:C·the property right. The record us is complete.v"Everythiug ,i" :bere for our consideration which was before the. co.llI1't below. WemuS!;.go to the full merits, as shown by the ord,' in order todetermiqe.whether the interlocutory decree for aperpetual injulilctiou is Elrror, and, if we determine the property rightadve.rs&1y to the the injunction should be9,issolved; and no sufficient reason bas/peen suggested why the accounting-to which the complainant is not entiUed, and which would he an invasion of a right; and1;thex:efore inequitable and improper, under our view of the case""':'shoUld. :pl'ocaed. u, It is not necessary for purposes of analogy to enlarge upon the wellunderstQOd dhndamental truth expressed in the constitutions, statutes, Rnd ,the vatioQ.s states, that the common law and equity jurisprUdence ,of England ,prevail in this country, so far as the' same,arQ,uot to our instituJions, for the reason that rule 90 of the SUpreme court, (adopted by court, rule the .practiceof tb$ courts of equity of themnited States, in effect, that, intbe of an express rule decision, thepl'actice shall he, I
RICHMOND V. ATWOOD.
25_
regulated by the practice of the high court of chancery in England, so far as the same may be reasonably applied, not as positive rules, but as furnishing just analogies. We do not refer to this as furnishing ali absolute rule for the determination of rights, but as indicating a rec6gni. tion of the system of practice ordinarily controlling equity procedure in the federal courts. It may still further be observed that, as early as 1818, the supreme court in determining a question of procedure, in Rabinson v. CampbeU,3 Wheat., said, (page 222:) "The court. therefore, think that, to effectuate the purposes of the legislature, the remedies in the c9urts of the United states are to be, at common law or iIi eq'liity, * * *accOl'ding to the principles of common law'and equity as distinguished and defined in that country from which we derive our knowledge of those principles." And in 1851, in Pen'TUl'!Jlvania v. Bridge Co., 13 How. 518, 563, it is "Thei"tiles of the high court of chancery of England have been adopted by the courts of tbe United States. ... ... ... The usages of the high cOlirtof chancery in England, whenever the jurisdiction is exercised, govern :the pro,ceedings. This may be said'to be tbe common law of chancery, an!lsince the organization of the government it has been obsel'ved." See, also, Rev. St. U. 913; Vattier v. Hinde; 7 Pet. 252, 274; Bein v. Heath, 12- How. 178. And to the same effect in the state <lourts. c!cN.Y. R. Co. v. Mayor, etc., 23 N'. J; Eq. 515,517; State v. RoUins, 8N. H. 550; Pierce v. State, 13 N.H. 536; Connecticut River Lumber CO.V. Olcott Falls Co., 65 N. H. 290, 21 AU. Rep. 1090; Le Guiti v. Gouverneur, 1 Johns. Cas. 436, In the case last referred to Chancellor says, (page 508:) "Our system of jurisprudence is borrowed from the English system; and in 'Id} its great outlines, as weHali in its subordinate parts, is happily modElled after admirable monumtlnt of the experience and wisdom of ages." . Stle, also, "Note by the Court" in ThorfUiOn v. Wooster, 114 U; S. 112, .; Sup. Ct. Rep. 788. ", ' Ofco'urse, it is understood that this adoption is subject to ,the limitation that it must be in k-e'eping with the principleS of our, institutions, and subject to the acts of congress, limiting or enlarging the same, as, for instance, the old statute limiting the right of appeal, cOntrary to the English system, to appeals from final decrees. But now that this limitation is removed, and the right of appeal from interlocutory injunction orders and decrees has been created by statute as in England, without any restriction as to the manner in which equity and justice shall be administered thereunder, it only remains to inquire what the chancery practice of England has been in this respect, and whether the same may reasonably be applied as consistent with ourfnstitutions, and as a matter of convenience and safety in equity procedure in this jurisdiction. In England, any person aggrieved by a decree or order of the. court of chancery is entitled as a matter <:>fright to appeal to the house of lords, (2Dll.liiell, Ch. Pr., 4th Ed., 1471;) and, in practice, this right -extends to interlocutory decrees, (Id. 1492; Forgayv. Conrad, 6 How.
201,:: 2Q5W,>and 10) to;deeisions,: decrees, and Qf;;tlie: Daniell, speakingnoftb.e sa)'s,{page 14921".. ":: :,L 1 \;:')'j . ,"AflpeaJldl'oJQiC9urU of equity, b»ipetjtion 4itreffrom by writ of ot .wh!ch will0n,\y lie where the . ,t?, be, that courts of equIty often decule the, Iperitli ot In 1nte1'\mic.lia.te 'Ottlf\rs, and the 1
saves
OQ1iU, Bligh, (Nj(SJ):&l&. ;;" " . j 'i:;!' '::i, , " :;" Indeed, it seems to have been the practice, fromanead1 period, in to of (lauses before it a full record, upon appeal from" intElrfocutory orders and' decrees baSed Pi it causej tbeflctlOn com; l ih Jthill(l'espectw8s notdlonfiM4 ·tOlcaUflesin w,bicbit concurred was taken, bu;t mstancee where the flndlngs'wete'revetlse!d upon an examlhatlon of the 1'ecfud:':'(,'Y.Bauchier V\' Taylor., 4"BrQ"Wn);F,arl. Cas., Gover1JO'rs, 6<Browu, £arl.Cas. EUisv.$egr,av8, 7 i.Whitey. Lightb'l;l:'l'!J:Le,.4 llr:owp, !Parl. Cas. 181 ; Q1Fe&<#l, 8 ,Clnrlt &,;F. ,.30; RpU8 v. Barker,4 ParI; Cas. 660. Tbl3, McOan v. OWerraU, supra, was be,ore the house oflordsin alth,?ugb j.n that case,' the matters (iB,,"ol ved were of by lord chan,cellor sll;ying: '1 !Now.. . iIllyr,IQrQs, thlil., cO"f/i!e,Qfi in ,tllis hquse, in arrangIng theminulf!ll.oUbe decree, has priopiples upon :whicll the. decretl, is, be founded. ... .. 'rhat. however, has been found to lead, 8ollleti!tJ:e!l,to repetition of appeltls; .', lie ... Where. therefore, it is possible, I think it more expedient, and more calculatt'd to, save expense to \he.pllrUes, ,\ball,thla hoilse,iinll1akil'!gitl\order, should frame the decree in pl'eventthe of any fqrther reference, to the OQUl't below.", : ' ;tThispraatice is by no means new in the equityJurisprudence,of our own avery early casein Nl'w York,involving interesUJ,of greatmagnituae,-LeGuenv.Gouvenneur"l Johns. Cas, and lit a period when Chancellor ,Kll:Nl'was a ,member of thecour,tof ·errors, the question was underC<ilnsidaration as to. the measure of bealfordedupon an appealfroman inter.1ocutoryorder directing the mal of an issue at law. The appellate court determined that the complainant had no equity, and aftel! rmuchargument 1aoo full which involved a review cases and, ,the practice of the ihouse·,of l(IJrda.'pl'oceeded to. final judgment,and the,bill. The question was one of new impressionin, the American courts, and three judges rendered ,opiuions in thj:} eause; KENl',J" in the course of aluminous ()pinl0n, (page 508,) saying:
2
of
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27, settled rule of the house of lords in England. upon' appeals. aIgiven. This is leading maxim>in their,sY\ltlJm of appellate jurisprudence. /lnll i,nstances lire. accordinglY, very frl'quent, in which the lords. on appeals from interll,icutory orders in chancery. have reversed the order. and decided fully on the merits." W-.y8·to, give such a decrlJe as, the C01l]1;., below ought to
:
Again he says, (page 508:) "'fhelr, power on appeals Is exerclsf'd .wlth great Iatitnde fn dlsml!'slng the bill. or IDlid'rHng the relief, or granting it COllditlonally. 88 may best answer the ends, of justice and tile exigencies 'of tile, case." Again, (page 509:) "PosseBsir!g the authority .to decide finally. I think we ought toexei'· cise it . in this instance. .. · · All the proofs are bAfore liB. .. .. · The cause is aB ripe here as it was In thecl)urt beiow, for ultimate dt'clsion; and. if we al-e persuaded in our ownmilldsthat the facts before 1I8 can never support the allegations of fraud. we ought to say so. and put an end to the contention... Andfu the same line and to the same effect RADCLIFF, J., says, (page
499:) "I have also no doubt th!\t thlscotirt may proceed further, If It appear that the merits are fully in its pOssession. and determine finally bet ween the parties. That such is the power, and frequently the practice. of the house of l,ords in England, is evident from the cases whicbhave been cited. .. .. .. On similar appeals, they affirm, revel se, or alter the order for an Issue, and sometimes proceed to dismiss the biIl, or othl'rwitJe decree on the merits, " The power of this court is the same. In this respect. 1 can see nothing In our constitution or laws to restrain it. · .. · In this case, the prol,rlety of making a lioltI decree arises out of the appeal itself. which bring8 beCore us the whole merits of the cause."
500:) Again, ".The power appt'ars to me esspntlal to a court of appeal in the lut resort. and 1 bave no doubt tllat it is vested ,here." The authority last referi'edto is of unusual value, both by reason of ita involving the first American discussion of the question. a.nd from the great learning of the court rendering the olJinion, and this, with the fact that 8 full report of the case (Johns. Cas. 1800) is not easily accessible, would seem to justify the somewhat extensive quotations. Five years later the same court, through SPENCER, J., in BU8h v. Lit>ingston, 2 Caines, Cas. 66, in making a final decision of the cause, said, (page 85:) .. There remains only one point to be considered; that is. wht'ther the court In the case of GOu'oerneur & Kemble v. Le Guen, will linillly decide the this court. on an appeal from the order of the chancellor, directing an issue, finally decided the cause, and directed the complainants' bill to be dismissed. ltdid so on precedents from the proceedings of the house of lords in England. on appeals from chancery. and because the whole merits of the case were before the court. When it is considered that there can be no further proufs in the cause, that the whole merits have been discussed and reviewl'd. that it wiII save litigation and expense. I am myself contented to bEl bound by the precedent which has been made." See. also, Beebe v. Bank. 1 Johns. 529.
28'
vol.,52.
pattltit' ap,Vro\1Al' in DqIe v. ROO8evtlt,:6 '.fohns.Ch. :255, 257, and, so far in New ):orkuntU alioption of the
-"IIf[1822thedodtririe of lA Guen v. Go'Uvern/i'arwaUeferred to with ap-
Mayor, etc., 23 N. J. Eq. 519, is aside from the purpose. In Terhune ' v. Colton, 12 N. J. Eq. 312, although the preciseq'ltestionunderconsiderafion'was'not involved; EMfER,J.,(page 318,) speaks of an interlocutQryorder\\rhioh involved: the merits'of the casej·and in 1872 the pre': cise questions which we are:lloW considering came before the New,Jersey court of. errors and appeals in the case of Nwark N. Y. R. Co. v. by order or CClm:t of /!.ppeal fl'omthe sanie or any ,'part fbelll1iof;?1 .and the case last referred -to illvolvedboth the,right of order,and the ,power of the court to conclude the cause upon its merits. These questions received careful con-' .tbe opinion of the court, not only sustaining the right of appeal, but, after reviewing the Englisll and H In I tq, power of thIS Hourt to deal, "It seems tome this court should ,pass, upon: the question as to ,the equity bill;" ete'.' iif"': 'inc; 'Under the' eqtiit-y practiceto which we have referred; and it fIlat, wh:jl'e tn,e,appellatElcourt its :discretiCip', apd should, when eqUIty so reqUlres,make full dIre9tlon;l'lsto them,anner in which the cause shall be disposed of below. No special or peculiar conditions have been suggested as existing in this case, as a reMoiiWhy bftlaa"t\:sthedectee in the cirC\1itco1il't; but, on the contrary, as it seems;f3':1iS-?there ttre strong equitablel ¥li whichjs ,incident to and based p,;ppn a. Wll.lch ·\lpon the recgrqappears to tbeap. eT;rol).!'\oP.s, it is our COIlCIl;lsioDj allAliIe:fuU recQrd,l§hefore uS,upqu from an injunctjon 3 .full and a finding Which qfthe pl'opertyright involved, th,at wesbo\llq finlll, .of the cause in accordance with. the view w,qi.i;l,h" we .holdupO,Ij.. the substaq,tial mel'itEl' It therefore follows the fi"ildings the court are reversed, the decree' foran injunctionp;nd,·foran accounting is vacated,and it is ordered that mandateis8t1e'liccordingly, and with further direction that the bill be dismissed.! ,.
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tJ.
OCQNTO WATER CO.
29
NATIONAL FOUNDRY & PIPE WORKS, Limited, v·. OCONTO WATER Co. . et al. f.'l
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(Citcuo£t
E. D.
Wisconsin. October 10,1892.)
L
MUNIOIiPAl. ,CORPORATIONS-CONTRACTS-FRAliCHISlIS.
.of the city of Oconto conferred the powers belonging to municipal corpOrallODsat common law, and contained the "general welfare" clause usual in city dhIlrter..s.' (La.w. S Wis. c. 56.) The general law confe.rring on cities the powe.r to lell:islate upon the construction and operation of waterworks had not been adopted 'city, so as to derive any powers therefrom. Held, that the city had no power to a franchise for .owlting and operating waterworks, and for other things collateral thereto. .
B.
CORP(lRATIONS-BoNDS':"VALIDITY-WHEN "ISSUED."
.A;wHltercompa.ny put forth bonds of the par value of '125,000. depositing $25,000 of them with a trust company under a deed of trust, and the other $100,000 in trust as collateral for an advance of $40,000. Thereafter advances of $27,000 were contraQted'for, and in part made. BeZel, that the bonds, although and not sold,.w,ere,.",issued," withln the meaning. of Rev. St. Wis. § 1753, whICh. declare!! voidanY,boniis issued by a corporation, except for money actually received. equa.l to 75 per cent. of their par value ; and the same were.not enforceable in the hands .;Of
Water QOInpany, S. D. Andrews, W. H. Whitcomb, On motionfof receiver and injunction. Granted. W. p;.OV<tn Dyke and Geo. H. Noyes, for complainant. .lV. li,".')f'ebster; for . '., .,., ;" ;
Bill by the National Foundry. & Pipe Works, Limited,
mstrictJudge. The conceded facts upon which the present for a receivera,nd for an injunction a.re based, so far .as now ,W them" th,ese: on the .2d day of In thIS court' In an actron at agaInst toe Oconto Water Company for $24,250.94 damagl1s and costs, PJW9 O"f e.,.x., ecutiP,n,.n..¥u(J,.?o.na, filed, "fhis b.. il.l a.gain.st the j.. ud,·.g,l).nd others t() Its property th payment ofth,e Wa:er Company Incorporated under the of WIscopsm, on the 8th. gay of July , 1890, forthe ,()f and 'operating a system of w/lterworks withinthe p('Oyof!to, and of supplying the cjty and its inhabitants water for anq,}or domestic, manufacturing, and other purpPSel;j, "ppthe 9th day of July, 1890, the city of Oconto adopted an ordipapqewllereby it was ordained "that theOconto Water. Company, its successors and assigns, be and are hereby authorized, subject to the limitations herein or by law provided, to construct, own, maintain, and operate waterworks in the city of Oconto; to lay pipes for the carrying aria distributing of water in any of the streets, avenues, alleys, lanes, bridges, or public grounds of the city, as now or may hereafter be laid and hold, as by law authorized, any and all real estate, out; and water necessary to that end and purpose, with all proper buildings, wells, conduits., or other means. of obsupply, with all necessary machinery and attachments to' the cityapc;l the inhabitants· thereof with good and ...p. ' \
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