In March, 1903, the petitioners filed their bill in the circuit [201 U.S. 156, 157] court of the United States for the southern district of New York against the New England Enameling Company, to restrain the further infringement by that company of letters patent of the United States, No. 527,361, for improvements in enameling metal ware, and to recover damages for past infringement. After answer and proofs, the case came on for hearing, and on July 8, 1905, a decree was entered, reciting that nine of the twelve claims in the patent were good and valid, that three were invalid and void by reason of the fact that the patentee was not the original or first inventor or discoverer, that five of the nine valid claims had been infringed by the defendant, but the remaining four had not been. As to the claims held invalid and those found to have been not infringed, it was ordered that the bill of complaint be dismissed. As to the remaining five claims,-those held to be infringed,-it was ordered that the plaintiffs recover the gains, profits, savings, and advantages which the defendant had derived by reason of the infringement, and that the case be referred to a master to report the amount thereof, and also that an injunction issue against further infringement. On August 1, 1905, the defendant appealed from said decree to the court of appeals and filed its assignment of errors. On August 8 the plaintiffs also appealed to the circuit court of appeals and assigned as errors the rulings in the decree adverse to them. On January 3, 1906, this cross appeal of the plaintiffs was dismissed by the court of appeals, on the ground that it had no jurisdiction thereof. Thereupon the plaintiffs filed in this court this petition for a writ of mandamus, commanding the judges of the circuit court of appeals to take jurisdiction of said cross appeal, and to dispose of it simultaneously with the appeal of the defendant.
Messrs. Louis Marshall, Arthur v. Briesen, and Walter D. Edmonds for petitioners. [201 U.S. 156, 158] Messrs. Robert N. Kenyon, Walter F. Rogers, and Jacob Steinhardt for respondent.
Mr. Justice Brewer delivered the opinion of the court:
The decree entered by the circuit court was interlocutory, and not final. Barnard v. Gibson, 7 How. 650, 12 L. ed. 857; Humiston v. Stainthorp, 2 Wall. 106, 17 L. ed. 905, and cases cited in note; Estey v. Burdett, 109 U.S. 633, 637 , 27 S. L. ed. 1058, 1059, 3 Sup. Ct. Rep. 531; McGourkey v. Toledo & O. C. R. Co. 146 U.S. 536 , 36 L. ed. 1079, 13 Sup. Ct. Rep. 170 (in this case is a full discussion of the differences between an interlocutory and a final decree); Hohorst v. Hamburg-American Packet Co. 148 U.S. 262 , 37 L. ed. 443, 13 Sup. Ct. Rep. 590; Smith v. Vulcan Iron Works, 165 U.S. 518 , 41 L. ed. 810, 17 Sup. Ct. Rep. 407.
Plaintiffs brought one suit upon a single patent. The findings of the circuit court that three of the twelve claims were invalid and that the remaining nine were valid, but that four of them had not been infringed by the defendant, did not break this one suit into twelve. They were a guide to the master in his ascertainment of the damages, and indicated the scope of the final decree.
In the Federal courts no appeal can, as a general rule, be taken, except from a final decree. As said by Mr. Chief Justice Taney in Forgay v. Conrad, 6 How. 201, 205, 12 L. ed. 404, 406:
In the latter case this was held persuasive against extending the right of review given by 5 of the circuit court of appeals act of March 3, 1891 (26 Stat. at L. 826, chap. 517, U. S. Comp. Stat. 1901, p. 547), to other cases than those in which there was a final judgment or decree, although the word 'final' is omitted in some of the clauses of the section.
By 7 of that act, however, an appeal was provided from certain interlocutory orders or decrees. That section has been twice amended. 28 Stat. at L. 666, chap. 96; 31 Stat. at L. 660, chap. 803, U. S. Comp. Stat. 1901, p. 550. As it now stands it reads:
It will be noticed that the appeal is allowed from an interlocutory order or decree granting or continuing an injunction, that it must be taken within thirty days, that it is given precedence in the appellate court, that the other proceedings in the lower court are not to be stayed, and that the lower [201 U.S. 156, 162] court may require an additional bond. Obviously that which is contemplated is a review of the interlocutory order, and of that only. It was not intended that the cause as a whole should be transferred to the appellate court prior to the final decree. The case, except for the hearing on the appeal from the interlocutory order, is to proceed in the lower court as though no such appeal had been taken, unless otherwise specially ordered. It may be true, as alleged by petitioners, that 'it is of the utmost importance to all of the parties in said cause that there shall be the speediest possible adjudication by the United States circuit court of appeals as to the validity of all of the claims of the aforesaid letters patent which are the subject-matter thereof.' But it was not intended by this section to give to patent or other cases in which interlocutory decrees or orders were made any precedence. It is generally true that it is of importance to litigants that their cases be disposed of promptly, but other cases have the same right to early hearing. And the purpose of Congress in this legislation was that there be an immediate review of the interlocutory proceedings, and not an advancement generally over other litigation.
Petitioners rely mainly on Smith v. Vulcan Iron Works, 165 U.S. 518 , 41 L. ed. 810, 17 Sup. Ct. Rep. 407. In that case it was held that when an appeal is taken from an interlocutory order granting or continuing an injunction, the whole of the order is taken up, and the appellate court may (if, upon an examination of the record, as thus presented, it is satisfied that the bill is entirely destitute of equity) direct a dismissal, and is not limited to a mere reversal of the order granting or continuing the injunction. Take an ordinary patent case. If an injunction is granted by an interlocutory order and the order is taken on appeal to the circuit court of appeals, and that court is of opinion that the patent is, on its face, absolutely void, it would be a waste of time and an unnecessary continuance of litigation to simply enter an order setting aside the injunction and remanding the case for further proceedings. The direct and obvious way is to order [201 U.S. 156, 163] a dismissal of the case, and thus end the litigation. And such is the scope of the opinion in that case. After noticing the general rule that appeals will not lie until after final decree, and that an order or decree in a patent case granting an injunction and sending the cause to a master for accounting is interlocutory only, and therefore not reviewable on appeal before the final decree in the case, it referred to the provision of 7, and said (p. 525, L. ed. p. 812, Sup. Ct. Rep. p. 410):
But nowhere in the opinion is it intimated that the plaintiff was entitled to take any cross appeal or to obtain a final decree in the appellate court. This view of the scope of 7 was reaffirmed in Mast, F. & Co. v. Stover Mfg. Co. 177 U.S. 485, 494 , 495 S., 44 L. ed. 856, 860, 861, 20 Sup. Ct. Rep. 708.
It is suggested that, as to the claims held to be invalid and those held to be valid, but not infringed, the bill was dismissed; that thus, in fact, a final decree was entered which entitled the plaintiff to an appeal. Forgay v. Conrad, 6 How. 201, 205, 12 L. ed. 404, 406, and Hill v. Chicago & E. R. Co. 140 U.S. 52 , 35 L. ed. 331, 11 Sup. Ct. Rep. 690, are cited as authorities. In both these cases there were several defendants and the decrees were adjudged final only in respect to certain of the defendants. In the first the circuit court passed a decree declaring sundry deeds to be fraudulent and void and directing the lands and slaves therein mentioned to be delivered up to the complainant, and also directing one of the defendants named in the decree to pay him $11,000, and 'that the complainant [201 U.S. 156, 164] do have execution for the several matters aforesaid, in conformity with law and the practice prescribed by the rules of the Supreme Court of the United States.' The court refused to dismiss the appeal, holding that, while the decree was not final in the strict technical sense of the term, yet, in view of the effect of the orders entered, and the fact that unless review was granted at once there might be irreparable injury, the decree must be regarded as final to that extent. At the same time it criticised the terms of the decree, said that the final orders should have been delayed until the master's report was received, and added, after its comments upon the procedure below (p. 206, L. ed. p. 406):
In the subsequent case of Beebe v. Russell, 19 How. 283, 15 L. ed. 668, in which the rule in reference to the finality of decrees was further considered, it was said, in explanation of the decision in the Forgay Case ( p. 287, L. ed. p. 669):
In Hill v. Chicago & E. R. Co. 140 U.S. 52 , 35 L. ed. 331, 11 Sup. Ct. Rep. 690, there had been an order of dismissal in favor of some of defendants, together with a reference to a master of a separable controversy between the plaintiff and other parties, and the court observed (p. 54, L. ed. p. 332, Sup. Ct. Rep. p. 691):
But, as held in Hohorst v. Hamburg-American Packet Co. 148 U.S. 262 , 37 L. ed. 443, 13 Sup. Ct. Rep. 590, that rule does not apply to cases where the liability of the defendants is alleged to be joint; and, therefore, cannot to a case in which there is but a single defendant.
The rule is discharged, and the application for a writ of mandamus is denied.