When a decree of the circuit court at a hearing upon pleadings
and proofs, dismissing a bill in equity for the infringement of a
patent, has been reversed by this Court on appeal upon the grounds
that the patent was valid and had been infringed by the defendant,
and the cause remanded for further proceedings in conformity with
the opinion of this Court, the circuit court has no authority to
grant or entertain a petition filed, without leave of this Court,
for a rehearing for newly discovered evidence; and if it does so,
will be compelled by writ of mandamus to set aside its orders, and
to execute the mandate of this Court.
Page 166 U. S. 264
This was a petition, presented to this Court on January 4, 1897,
for a writ of mandamus to the Honorable George R. Sage, United
States District Judge, sitting as a judge of the Circuit Court of
the United States for the Southern District of Ohio, to command him
to execute a mandate of this Court and to set aside orders made by
him after receiving the mandate and inconsistent therewith. The
case was as follows:
Upon a bill in equity for the infringement of letters patent, an
answer denying patentable novelty and infringement, a general
replication, and proofs taken and completed, the circuit court
sustained the defense of want of novelty, and thereupon, on January
3, 1891, entered a final decree dismissing the bill for want of
equity, with costs.
Potts v. Creager, 44 F. 680.
The plaintiff appealed to this Court, which, on January 7, 1895,
held that the letters patent were valid and had been infringed, and
therefore, as appeared by its opinion and mandate, reversed the
decree of the circuit court and remanded the cause to that court
for further proceedings in conformity with that opinion.
155 U. S. 155 U.S.
597,
155 U. S. 610.
On February 26, 1895, the circuit court entered a decree "in
conformity with the said mandate" setting aside its former decree
and adjudging that the letters patent were valid, and had been
infringed, referring the cause to a master to take an account of
profits, and awarding a perpetual injunction against the
defendants. On July 16, 1895, the master filed his report and
account of profits.
Before any action of the circuit court upon the master's report,
the defendants, on November 29, 1895, filed a petition for a
rehearing, for newly discovered evidence affecting the novelty of
the invention, and that court ordered notice to plaintiff to show
cause on January 4, 1896, why that petition should not be granted.
On that day, the plaintiff objected in writing to the consideration
of the petition
"on the grounds that this Court is without jurisdiction or
authority in the premises, that the issues sought to be made by
said evidence are not properly before it, and that the proceedings
are and have been irregular and not according to law."
But the circuit court, on January 15, 1896, granted the petition
for a rehearing
Page 166 U. S. 265
for reasons stated in its opinion reported in 71 F. 574, and,
after a hearing upon the new evidence, entered an order on,
December 21, 1896, by which, the court being of opinion that the
letters patent were
"void for want of invention in view of said new evidence, and
that therefore the equities are with the defendants, it is ordered
that said petition stand as a supplemental answer, and that the
replication as filed be considered as a replication thereto."
Its opinion upon entering that order is reported in 77 F.
454.
All the decrees and orders of the circuit court above mentioned
were made by Judge Sage.
MR. JUSTICE GRAY, after stating the case, delivered the opinion
of the court.
The general rules which govern cases of this kind are stated,
and the decisions by which those rules have been established are
collected, in the recent case of
Sanford Fork & Tool Co.,
Petitioner, 160 U. S. 247, in
which this Court said:
"When a case has been once decided by this Court on appeal and
remanded to the circuit court, whatever was before this Court, and
disposed of by its decree is considered as finally settled. The
circuit court is bound by the decree as the law of the case, and
must carry it into execution according to the mandate. That court
cannot vary it, or examine it for any other purpose than execution,
or give any other or further relief, or review it, even for
apparent error, upon any matter decided on appeal, or intermeddle
with it further than to settle so much as has been remanded. If the
circuit court mistakes or misconstrues the decree of this Court,
and does not give full effect to the mandate, its action may be
controlled, either upon a new appeal (if involving a sufficient
amount) or by a writ of mandamus to execute the mandate of this
Court. But the circuit
Page 166 U. S. 266
court may consider and decide any matters left open by the
mandate of this Court, and its decision of such matters can be
reviewed by a new appeal only. The opinion delivered by this Court
at the time of rendering its decree may be consulted to ascertain
what was intended by its mandate, and either upon an application
for a writ of mandamus or upon a new appeal, it is for this Court
to construe its own mandate, and to act accordingly."
160 U.S. 255,
160 U. S.
256.
In that case, the circuit court, at a hearing upon exceptions to
an answer in equity, had sustained the exceptions and, the
defendant electing to stand by his answer, had entered a final
decree for the plaintiffs, and this Court, upon appeal, ordered
that decree to be reversed and the cause remanded for further
proceedings not inconsistent with its opinion. As the record stood,
the only matter which was or could be decided by the circuit court,
or by this Court on the appeal, was the sufficiency of the answer,
and neither the circuit court nor this Court, upon adjudging the
answer to be sufficient, could deprive the plaintiffs of the right
to file a replication putting the cause at issue. It was for that
reason, and because no issue of fact had been joined or tried in
either court, that this Court held that the cause had been left
open for a trial of the facts in controversy between the parties,
and that the circuit court, for the purpose of more fully or
clearly presenting those facts, was authorized to allow an
amendment of the bill. This Court therefore declined to grant a
writ of mandamus, but took the precaution of adding:
"The case is quite different in this respect from those in which
the whole case, or all but a subsidiary question of accounting, had
been brought to and decided by this Court upon the appeal."
160 U.S.
160 U. S. 259.
The case now in question comes exactly within the class of cases
so referred to and distinguished. It was originally heard in the
circuit court not merely upon a question of sufficiency of
pleading, but upon the whole merits. That court, at a hearing upon
pleadings and proofs involving the questions of the novelty of the
alleged invention and of its infringement by the defendants,
entered a final decree dismissing the bill. Upon the appeal from
that decree, both those questions
Page 166 U. S. 267
were presented to and considered by this Court, and were by it
decided in the plaintiff's favor. Its decision of those questions
in that way was the ground of its opinion, decree, and mandate
reversing the decree of the circuit court dismissing the bill and
remanding the cause to that court for further proceedings in
conformity with the opinion of this Court. The decision and decree
of this Court did not amount, indeed, technically speaking, to a
final judgment, because the matter of accounting still remained to
be disposed of.
Humiston v.
Stainthorp, 2 Wall. 106;
Smith v. Iron
Works, 165 U. S. 518. But
they constituted an adjudication by this Court of all questions,
whether of law or of fact, involved in the conclusion that the
letters patent of the plaintiff were valid, and had been infringed.
Applying the rules stated at the beginning of this opinion, the
questions of novelty and infringement were before this Court and
disposed of by its decree, and must therefore be deemed to have
been finally settled, and could not afterwards be reconsidered by
the circuit court.
When the merits of a case have been once decided by this Court
on appeal, the circuit court has no authority, without express
leave of this Court, to grant a new trial, a rehearing, or a
review, or to permit new defenses on the merits to be introduced by
amendment of the answer.
Ex Parte
Story, 12 Pet. 339;
Southard
v. Russell, 16 How. 547;
Ex Parte
Dubuque & Pacific Railroad, 1 Wall. 69;
Stewart v. Salamon, 97 U. S. 361;
Gaines v. Rugg, 148 U. S. 228. In
this respect, a motion for a new trial or a petition for a
rehearing stands upon the same ground as a bill of review, as to
which Mr. Justice Nelson, speaking for this Court in
Southard
v. Russell, above cited, said:
"Nor will a bill of review lie in the case of newly discovered
evidence after the publication or decree below, where a decision
has taken place on an appeal, unless the right is reserved in the
decree of the appellate court, or permission be given on an
application to that court directly for the purpose. This appears to
be the practice of the Court of Chancery and House of Lords in
England, and we think it founded in principles essential to the
proper administration of the law, and to a reasonable termination
of litigation
Page 166 U. S. 268
between the parties in chancery suits."
16 How.
57 U. S.
570-571. So, in
United States v.
Knight, 1 Black 488,
66 U. S. 489,
Chief Justice Taney said that in a case brought before this Court
exercising general jurisdiction in chancery,
"the defeated party, upon the discovery of new evidence, may,
after a final decree in this Court, obtain leave here to file a
bill of review in the court below to review the judgment which this
Court had rendered."
The decree entered by the circuit court, presently after
receiving the mandate, setting aside its former decree, and
adjudging that the letters patent were valid and had been
infringed, referring the case to a master for an account of
profits, and awarding a perpetual injunction, was, as it purported
to be, in conformity with the mandate of this Court. But the
subsequent orders of the circuit court entertaining and granting
the petition for a rehearing without previous leave obtained from
this Court for the filing of such a petition, were irregular and
unauthorized, based upon a misunderstanding of the mandate, and in
practical though unintentional disobedience of the command thereof
that further proceedings be had in conformity with the opinion of
this Court. Upon the record as it stands, a clear case is shown for
issuing a writ of mandamus to set aside those orders, and to
execute the mandate according to what appears to this Court to be
its manifest meaning and effect.
Upon the question whether an application for leave to file a
petition for a rehearing in the circuit court could and should be
entertained by this Court at the present stage of the case, no
opinion is expressed, because no such application has been
made.
Unless such an application shall be made to this Court within 20
days, and shall, upon consideration, be granted by this Court, an
order will be entered that the
Writ of mandamus issue as prayed for.
