201 U.S. Argument for Petitioners. 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. Mr. Louis Marshall, with whom Mr. Arthur v. Briesen and Mr. Walter D. Evans were on the brief, for petitioners. Mr. Philip Mauro, with whom Mr. Harold Binney and Mr, Argument for Respondent. 201 U. S. C. A. L. Massie were on the brief, for petitioner in No. 18, original, argued simultaneously herewith.1 Mandamus is the proper remedy where, as here, a court refuses to act in a matter properly before it, or to take jurisdiction in a proper case, and from such refusal no writ of error or appeal will lie. Insurance Co. v. Comstock, 16 Wall. 258, 271; Matter of Christensen Engineering Co., 194 U. S. 458; Ex parte Hollon Parker, 131 U. S. 221; Re Farmers' Loan & Trust Co., 129 U. S. 206; Re Hohorst, 150 U. S. 653. Jurisdiction to entertain petitioners' cross appeal logically and reasonably follows from the principles laid down in Smith v. Vulcan Iron Works, 165 U. S. 518; Chicago Wooden Ware Co. v. Miller Co., 133 Fed. Rep. 541; Scriven v. North, 134 Fed. Rep. 366. A situation is presented by reason of the conflict in the decision of this case and the two cases last cited calling for certiorari in order that this court may make the practice uniform. The decree was in effect a final decision within the meaning of the act of 1891. Forgay v. Conrad, 6 How. 201; Hill v. Chicago & Evanston R. R. Co., 140 U. S. 52; Scriven v. North, supra; United Nickel Co. v. California Works, 25 Fed. Rep. 475; Borturek v. Brinckerhoff, 106 U. S. 3. The history of the amendment of 1900 and the plain meaning show that either party aggrieved by the granting of an injunction may appeal. Mr. Robert N. Kenyon, with whom Mr. Walter F. Rogers and Mr. Jacob Steinhardt were on the brief, for respondent. Mr. W. Clyde Jones, with whom Mr. John Ridout was on the brief, for respondent in No. 18, original, argued simultaneously herewith.1 Section 7 of the Judiciary Act of 1891, as amended in 1900, is not ambiguous but clearly incans that an appeal will lie only 1 Ex parte Automatic Switch Co., post, p. 166. 201 U.S. Argument for Respondent. by the defendant who has been enjoined by an interlocutory order or decree, and for the purpose of determining whether the injunction was properly granted. The amendments of 1895 and 1900 have not changed its provisions in this respect. The original act has been uniformly held to confer no jurisdiction to entertain an appeal from such portions of an interlocutory decree as dismissed the bill. Marden v. Campbell Co., 67 Fed. Rep. 809; Kilmer Co. v. Griswold, 67 Fed. Rep. 1017; Eagle Lock Co. v. Corbin, 64 Fed. Rep. 789. Under the act as amended in 1900, the following decisions were rendered on exactly the same question and to the same effect. National Co. v. Automatic Co., 105 Fed. Rep. 670; Thomson-Houston v. Nassau Co., 112 Fed. Rep. 676; Western Elec. Co. v. Abbott, 108 Fed. Rep. 953; Dowagiac v. Superior Co., 115 Fed. Rep. 886, 890. Cases construing the statute in the same way, but relating specifically to appeals from interlocutory orders rather than decrees are Westinghouse v. Christensen, 104 Fed. Rep. 622; Wire Co. v. Boyce, 104 Fed. Rep. 172; Frye & Bruhn v. Carstens, 130 Fed. Rep. 766. See also Metallic Extraction Co. v. Brown, 104 Fed. Rep. 345, 354. In Smith v. Vulcan Iron Works the present question did not arise. That case is not in conflict with the decisions of the Circuit Courts of Appeals denying the right of complainant to a cross appeal. It considered only the extent of the relief that could be given to a defendant improperly enjoined, not the extent of the jurisdiction. See Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485; In re Tampa Suburban Railroad Co., 168 U. S. 583. The history of this legislation and of the times shows that it was the intention of Congress to give the right of appeal to the defendant but to deny it to the complainant. Cong. Rec. 51st Cong., 1st Sess., pp. 3,298, 10,193, 10,199, 10,217, 10,222, 10,278, 10,302, 10,335, 10,363; 2d Sess., pp. 2,198, 3,087, 3,535, 3,583. This court will not allow a mandamus to be used in place of an appeal. Ex parte Schwab, 98 U. S. 240; Ex parte Perry, 159 U. S. 186. The decree was interlocutory, not final, within the meaning of the Judiciary Act. Barnard v. Gibson, 7 How. 650; McGourkey v. Toledo R. R. Co., 146 U. S. 536; Hohorst v. Hamburg-Amer. Packet Co., 148 U. S. 262; Estey v. Burdett, 109 U. S. 633; Hill v. Chicago R. R. Co., 140 U. S. 52; Dainese v. Kendall, 119 U. S. 53; Winthrop Iron Co. v. Meeker, 109 U. S. 180; Keystone Iron Co. v. Martin, 132 U. S. 91. In patent cases there cannot be two final decrees. Morden v. Campbell Co., 67 Fed. Rep. 809. MR. JUSTICE BREWER, after making the foregoing statement, delivered the opinion of the court. The decree entered by the Circuit Court was interlocutory and not final. Barnard v. Gibson, 7 How. 650; Humiston v. Stainthorp, 2 Wall. 106, and cases cited in note; Estey v. Burdett, 109 U. S. 633, 637; McGourkey v. Toledo & Ohio Railway Company, 146 U. S. 536 (in this case is a full discussion of the differences between an interlocutory and a final decree); Hohorst v. Hamburg-American Packet Company, 148 U. S. 262; Smith v. Vulcan Iron Works, 165 U. S. 518. 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: "In this respect the practice of the United States chancery courts differs from the English practice. For appeals to the House of Lords may be taken from an interlocutory order of the Chancellor, which decides a right of property in dispute. But the case is otherwise in the courts of the United States, where the right of appeal is by law limited to final decrees." See also McLish v. Roff, 141 U. S. 661, 665. In the latter case this was held persuasive against extending the right of review given by section 5 of the Circuit Court of Appeals act of March 3, 1891, 26 Stat. 826, 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 section 7 of that act, however, an appeal was provided from certain interlocutory orders or decrees. That section has been twice amended. 28 Stat. 666; 31 Stat. 160. As it now stands it reads: "SEC. 7. That where, upon a hearing in equity in a District Court or in a Circuit Court, or by a judge thereof in vacation, an injunction shall be granted or continued or a receiver appointed, by an interlocutory order or decree, in a cause in which an appeal from a final decree may be taken under the provisions of this act to the Circuit Court of Appeals, an appeal may be taken from such interlocutory order or decree granting or continuing such injunction or appointing such receiver to the Circuit Court of Appeals: Provided, That the appeal must be taken within thirty days from the entry of such order or decree, and it shall take precedence in the appellate court; and the proceedings in other respects in the court below shall not be stayed, unless otherwise ordered by that court, or by the appellate court or a judge thereof, during the pendency of such appeal: Provided, further, That the court below may in its discretion require as a condition of the appeal an additional bond." 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 VOL. CCI-11 |