COI,UMBUS WATCH CO.
v.
ROBBINS.
337
COLUMBUS WATCH CO.
et al. v.
ROBBINS
et al.
(Oircuit Court of Appeals, Si.'!:th Circuit. October 10, 1892.) No. 46. APPEALS-JURISDICTION-CmCUIT COURTS OF PATENT CASES. INJUNCTION IN
A decree .sustaining the validity of a patent, declaring iufringement, directing au injunction perpetual in form, and referring the cause to a master to take an account of damages and profits, is not appealable in its entirety; so as to give the circuit court of appeals jurisdiction to. fiually determine the questions of validity and infringementi for the decree is not final in its nature, and appealable as such uuderprior laws, out is interlocutory, and on an appeal therefrom, under section 7 of the act creating the circuit court of appeals, the court is limited to the question whether the injunction was prOVidently ·granted in the exercise of a legal discretion, and it can have no jurisdiction to render a decision on the other questions, even at the request of both parties, Jones Co. v. Munger Man'Uj"g Co., 50 Fe,d. l'tep. 785, 1 C. C. A. 668, disapproved. .
Appeal from the Circuit Court of the United States for the EasterI' Division of the Southern District of Ohio. Statenlent -by JACKSON, Circuit Judge: On. application of the parties to have this court, under the appew from order of the lower court granting an injunction, hear f!,ndfinally uetermine the merits of the controversy relating to thll validity of the patent in suit and the infringement of same. James Watson and M. Leggett, for plaintiffs. Lysander Bill and Geo. S. Prindle, for defendants; Before JACKSON and TAFT, Circuit Judges, and HAMMOND, District Judge. JACKSON, Circuit Judge. The appellees, as assignees and exclusiVf owners of reissued· letters patent No. 10,631, dated August 4, 1885, fot improvements in stem-winding watches, brought this suit in the ordinary form against appellants for the infringement thereof. On the hearing oi the cause upon the pleadings, proofs, exhibits, etc., the circuit sustained the validity of the original and reissued patents, adjudged that defendants had infringed certain claims of the reissue, ordered the usua' account as to damages and and granted an injunction restraining them, their officers and from making, selling, or using watches or watch movements embracing and embodying the invention or improvements described in and covered by the claims of the reissue which were held to be infringed. See 50 Feel. Rep. 545. This decree was passed in May ,1892. The defendants filed an assignment of errors, and prayed an appeal from the entire decree, and for a supersedeas of the injunction. The circuit court allowed an appeal from so much of its said decree as granted the injunction, but denied it as to the balance of the decree; the order of the court upon the prayer for appeal being as follows: "And now upon the filing of the assignment of errors and petition for appeal of the defendants by their solicitors for an appeal in said cause to the . v.52F.no.4-22
838
ftDERAL
vol 52.
United States circuit court of appeals for the sixth circuit, and for a BUpe1'sedeas of the granted in said cause, the courtrEjfusea the appeal 8S prayed, being' of the opinion that such an appeal can be taken only from a final decreElt, but allows an appeal from So much of the.d!lcree, the same being lnterlocuto'ry, as' grants an injunction ag-,tinst the defendants, on condition that appellants [defendants] file an appeal bond for ten thousand dollars herein, within ten days, conditioned as required by law, with security to be by one of the jUdges of tJIis coqrt." of appeal, tbe defendants, on tbesameday;June 1 1 1892, f1led:the required bond for superseding bti);1drecit,eq 'thtit"an a.ppea1'b,as been allowed from 80 much· ofsaid decree as grants aninjunctioD' against the defendants; aM'8, BUpCl'$edeas .'Tbeappellants having :perfected their appeaI.1'rom so much of the decree below as granted the ibjUrictlori, a full and cornplete transcript of reCOrq. has been filed and the case docketed in this court. .' The appeI1ants and appellees now .this bear and deterplipe the. entire cause upon its merita,-that is,to fipaUy decide the m!l'tters of controversy touching the. of the. and the question,9f tpe, e,nd that incident b.r the court court was in ;errorip, the patent and fipding that it had been infringed. This is upon. the, au.thority of Richmond v. Atwood, 48 910,1.Q. C. A,.14j'1",{decided by the court of appeals for the fifth circuit.) In the latter case the circuit court of the fifth. the opinjQp #,lat .an appeal like the ofthe act of: ¥arch 3,1891,inthe coul1t,wH4 such jurisdiction the cause that,i{ the toitsbeing heard; decided .upon its me;rits, the to consider and finally determine the entire controvtlrsy., Jt will, however, be observed that ,the order in that remandipg th,ljl,qRuseto the circuit. court, only directed the. to be dissplvf\dlllJd,disQharged. In· RichTnond v. Atwood the. cQurt .went :nto a consi4!,!rll!i<?n oftb,e questionuela.ting, of tqe patent and its, infringemflnt for the purpose of ascertainingwllether the in,junctionwae nmperly or improperly granted, anddidJ,lot undertake to JlPt?Il the merits, as this court is requellted to,. dojp. the PJ;'S8Ilt caSEl. , We entertain no doubt as to .*e power 'Q,Uhis court, under the present appeal, to examine and the reQ9rd, for the; purpose of determinordefoftl1e lower court, granting, the injunction, was ing or was not .er,nmeous. But we find ourselves unable to concur in the opini<?n by the court in Co. v. Munger'Manufg Co., that this courtcan"py the submissio.noJ;,copsent of the parties, assume and jurisdiction over the subjectrinatter of the liti"ation not covered
Jones
COLUMBUS WATCH
co.
V. ROBBI,NS.
339
by the appeal allowed anp. taken. It admits of no question that the entire decree of the circuit court was not appealable either under the sixth section of the act of March 3, 1891, or under previous provisions of law.' Barnard v. Gibson, 7 HdW. 650; Humiston v. Stainthorp, 2 Wall. 106; Iran Co. v. Martin, 132 U. S. 91, 10 Sup. Ct. Rep. 32. It was not final, but interlocutory, in its character, and subject to the further and future' control of the court below, and that court properly denied an appeal from the entire decree, and allowed'it only from so much thereofas related to the injunction as authorized by section 7 of the act of March 3, 1891. This limited appeal from apart of the interlocutory decree clearly did not remove the whole case or the entire decree from the circuit court to this court. It only brought up for review the question whether the action 'or order of the circuit court granting the injunction was proper or improper. This court by virtue of that appeal has before it for determination only the question whether that injunction should be sustained or dissolved. The cause is still pending in the circuit court upon all other questions and matters involved in the litigation. It is well settled that, in respect to all matters and questions not withdrawn by said appeal,and still under its jurisdiction and control, the circuit court may hereafter, either before or upon the coming in of the master's report upon the matters of account, change its opinion on the very questions this court is requested to decide finally. In Fourniquet v; Perkins, 16 How. 84, the rule is laid down that the whole case is open for revision, and that the court may change all interlocutory decrees or orders relating to the merits when the cause comes to final hearing. The same general principle is announced in Beebe v. Russell, 19 How. 283-287; Oraighead v. Wilsan, 18 How. 199; FarreUy v. Woodfolk, 19 How. 288; and Green v. Fisk, 103 U. S. 518. If this court were now to pronounce a final decree upon the matters or questions which still remain subject to the jurisdiction and control of the circuit court. it would be going beyond its legitimate sphere of judicial authority. This court, under the law of its creation, possesses and can properly exercise only an appellate jurisdiction. If it should, upon the request or consent of parties, assume to pass on and finally decide upon their merits causes or questions pending in a court of original jurisdiction, and not properly before this court, such action would clearly involve the exercise of original jurisdiction. Consent of parties cannot invest this court with such power or authority. The province of this court is the correction of errors in cases properly brought before it by writ of error or appeal. Each party to suits is not only entitled to the benefit of a final decision of the court below on the merits, but to the revisory jurisdiction of this court for its final disposition, after the court of original jurisdiction has ceased to have any further coutrol over the controversy or litigation. Until the questions of controversy leave the lower court, and cease to be subject to its control, this court cannot rightfully take jurisdiction thereof, without invading and encroaching upon the judicial domain of such lower court. The actaf 1891, § 7, permits .an appeal from an interlocutory order
840
·n:DERAL REPORTER, vol. 52,
granting Ol'COntilluing'lln injunctibn. The present appeal is allowed and taken frortisuch an order,and its legal effect and operation is to remove from the trial court to·this court only that part of the decree whichl'elate$ to the That part of the ihterlocutory decree iS,before this.Qoutt for revieW'.: The'lower court has no fUrther control or jurisdiction iover that subject until it receives the mandate of this court affil'mingjor reversing its' order granting the injunction. But all other parts or:potitions Of the interlocutory decree, such as those relating to the validityofthe reissue patent and its infringement, and the questions that mayiarise upon the account ordered to ascertain damages and profits, have not yet left the jurisdiction of the lower court. That court may heI'eafteit change its interlocutory decree on the very questions this coutt is requested to decide finally. For aught that appears or is known to this, court, the lower court may have already'done so. But snppoaatMscburt should· decide theinerits of the'case, its decision of matteI'S or questions not befondtior .review, under the present appeal, would have' nt'lbinding force bnthe lower court, and might be wholly disrega'r<led' :1V hen that court came to a final hearing.:of the cause. Nor would- the:premature decision of: this court upon questions not properly beforeitipMvent either sideifron'l takiJlgan appeaLfromthe final decree of thecirouitr court when such it decree shall be hereafter· rendered. Such a course· of practice and proced ure as this Clourt is requested to pursue, 'in reSpect to matters not properly before it f involving theexercise of original jurisdiction, wonld be attended wi,thgreat confusion and perplexity, and would greatly embarrass the orderly administration of justice. It is': contrary to all precedent, and entirely out of harmony with the federal judicial systernofthe United States. Under that system, original jurisdiction can only be exercised by the courts on which it is conferred by the constitution or laws. The blending of original and appellate jurisdiction is not sanctioned by either the constitution or laws of the United States. Sound principle, as well as wise public policy, requites that original and appellate jurisdictions should be kept distinct and independent. To blend them, or allow one court to exercise both, would be attended inevitably with evil and mischievousresults. It would doubtless have been well if in the creation of this court the seventh section of the act had' permitted or authorized an appeal fron'! interlocutory decrees sustaining the validity of patents and adjudging their infringement, so as to .obviate in many cases the taking of expensive accounts, and the delays incident thereto. This has not, however, boon done, as we construe the act of March 3, 1891, and it is not 'in the po\verof this court to :afford relief, such as the present ap·plication secksto secure. In our View·of the subject this court cannot properly comply. with or accede to the 8.IJplicationoftheparties, for the reasons already stated, that the appeal as allowed and taken does not bring up for review anything more than that portion of the interlocutory decree which granted the injunction, and that ·to consider and finally decide other matters, not covered by or included in tne appeal, would involve the exercise
COLUMBUS WATCH. CO.. V.ROBBINS.
3.41
Jf original jurisdiction, when this court, under the law of its creation, is restricted and confined to the exercise of appellate jurisdiction. In
our opinion the submission or consent of parties cannot invest this with the jurisdiction to pass upon and determine finally matters of controversy still pending in the lower court, and subject to its control and jurisdiction. But, inasmuch as the circuit court of appeals for the fifth circuit, in the case of Jones Co. v. Munger Mamif'g 00., above referred to, seems to have entertained, if not taken, a different view of the question, this court deems it proper to certify the matter to the supreme court of the United States, to the end that an authoritative decision may be made by that court, which will, by their construction of section 7 of the act of 1891, establish a uniform rule for all the circuit . courts of appeals. The following order was thereu pon entered; This cause comes before this court by an appeal from the decree of the circuit court of the United States for the division of the southern district of Ohio, sustaining the letters patent of the appellees, and declaring that the appellants have infringed, said letters patent, and directing the issue of a perpetual injunction, and ordering the statement of an account of profits and damages. The transcript presented to this court shows that the appeal was taken immediately from said decree before accounting was had. Both parties desire that this court should gi\Te a full hearing on the merits of said decree, so far as relate to the valiclity of the patent and infringement, and should enter a final decree in this court thereon, the parties agreeing between themselves to suspend accounting until the decision of this court can be had. This court, however, cannot find that they have, under the seventh section of the act creating United States circuit appellate courts, jurisdiction to grant such a hearing and enter such a final decree as is asked, because said decree of the circuit court is only an interlocutory decree, and presents on appeal, under section 7, only the question whether the decree for an injunction, interlocutory in fact, however final in form. was improvidently granted, in the legal discretion of the court, and involves only incidentally the question of the valiJity of the patent and the infringement complained of. The circuit court of appeals for the fifth circuit, under similar circumstances, after listening to adverse argument, in Jones Co. v. Munger Manuf'g 00., 50 Fed. Rep. 785, 1 C. C. A. 668, held that said section 7 gave jurisdiction to the court, on agreement of parties, to. render a final decree on the meritl;' of the validity and infringement of the patent involved. As the judgment of this court differs from that of a co-ordinate court, the instruction of the supreme court is respectfully requested upon the question. It is,therefore ordered that a copy hereof, certified under the seal of the court, be transmitted to the clerk of the supreme court of the United ,States.
842' :L
I"EDERAL REPORTER i r,' '.if' '.'
'vol. '52.'
MERCANTILE::TnUST
Co.
V. ZANlilSVIL1.E, MT.
V. &:
M.
Ry. Co. et al.
(Circuit'IOWn,
s. D. 0Mc. E. D; No.li43. '. ,,'
October 17, 1892.)
,
The title,' ',r"ai,lW,al'bOIid,s issued a,D,didelivered to a cOntractor in ,cons,ideration of bis prQmise to bulld certain traok ,ill ,in the c.ontraotor, with the right to pledge or sell ,tbem j and tbe purchaser or although has full of the tetms 01' thecontraot, and of the faotthat only four mIles of the nme contracted for built, can reoover their full value as against the receiver of the road. to, '"
In Equity. Bill by the Mercantile Trust Company of New York against the Zanesville, Mt. Vernon & Marion Railway Company and others to foreclose a mortgage. The receiver of the railway filed a cross On demurrer to the cross bill. bill to scale down the mortgage, Sustained, and the cross bill dismissed. A. cross complainant. W. H.SaffUl'd, ,John,J. Sroddard, and Gilbert D. Munsen, for complainant. MosesM.i(hanger, J.B. F'rYraker, and A. J. Sheppard, for respondents. SAGE, District Judge. ' This case is before the court on demurrer to the cross bill of the receiver of the Zanesville, Mt. Vernon & Marion The complainant's bill is for'foraclosure of a mortgagesecuring,;'b6ndsissti:edby said railway company. The cross bill sets up, among other things, that the mortgage bonds secured by the deed, of trust given to the complainant were authorized and direeted to be issued by underand by virtue of a contract in writing dated"August 24, 1888,and by it with one Chase Andrews. , 'By the terrnsofthis contract it was provided that he should haveal1 issue of 8225,000 of bonds, inconsideration whereof, and upon the funher consideration of $225,000 of the capital stock of said railway cOIIl'PanY,hebound himself, his heirs and assigns, to fully construct and' equip that portion of said· company's railroad known as the "Belt Lilia" With a trackage of not less ihan nine miles. It was further before the commenceprovided that the bonds'were to be issued to ment of said work, and they were accordingly so issned and delivered for said purpose, and fot1!'0other. 'A copy of the contract is attached to and made part of the bill. " The cross'biH further'sMs forth' that'Andrews and his assigns failed and refused, arid still to fulfill the obligations imposed upon them by the terms of said contract; in that they failed and refused, and still refuse, to build said beltlihe; excepting only about four miles thereof; and that he sold or hypothecated all of the bonds so issued and deliveredto him to persons who, hadfuINrhowledge of the termsofthe contract. and of the conditl0nsupoD which said bonds were issued; also that said persons took the same with full knowledge that Andrews had