The case was argued (in print) by Mr. Hill for the defendants, but the question of the jurisdiction of this court was not raised, and it is deemed unnecessary to insert the argument of the main point in the case.

Mr. Chief Justice Taney delivered the opin

ion of the court:

The question being, whether or not the decree of the Circuit Court was final, the Reporter thinks it proper to insert the whole of that decree, together with the statement of facts, as he finds it prepared by Mr. Justice Nelson. Circuit Court, United States.

John Gibson

ན.

Frederick J. Barnard

and others. }

In Equity.

Gibson the exclusive right to the Woodworth I. W. W. Woodworth conveyed to John This case comes before us on a certificate of planing machine in and for the city and County division. But, upon inspecting the record, it of Albany, with the single exception of two appears that the particular point or points upon rights in the town of Watervliet, in said counwhich the justices of the Circuit Court differedty. With this exception, the whole right of in opinion are not distinctly stated; and the the county was in Gibson. case must therefore be dismissed for want of jurisdiction.

Order.

This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of Mississippi, and on the point and question on which the judges of the said Circuit Court were opposed in opinion, and which was certified to this court for its opinion agreeably to the act of Congress in such case made and provided, and was argued by counsel. And it appearing to this court, upon an inspection of the 650*] said transcript, that no point in the case, within the meaning of the act of Congress, has been certified to this court, it is thereupon now here ordered and decreed by this court, that this cause be, and the same is hereby dismissed, and that this cause be, and the same is hereby remanded to the said Circuit Court, to be proceeded in according to law.

FREDERICK J. and SAMUEL W. BARNARD and Henry Q. Hawley, Appellants,

V.

JOHN GIBSON.1

Appeal does not lie from decree for injunction in patent cause, and reference to take account of profits, not being final.

Where a decree in chancery refers the matters to a master to ascertain the amount of damages, and in the meantime the bill is not dismissed nor is there a decree for costs, the decree is not a final one, from which an appeal will lie to this court, although there is a perpetual injunction granted.

The amount of damage which will follow from restraining a party from using a machine held under a patent right is a proper consideration to be addressed to the Circuit Court, but does not constitute a ground of appeal.

NOTE. What is a final decree or judgment from which an appeal lies. State and other courts. notes to 4 L. ed. U. S. 97; 5 L. ed. U. S. 302; 49 L. ed. U. S. 1001; 62 L.R.A. 515.

II. The two machines, the right to use which was thus excepted, consisted, first, of a machine in use at the time in said town by Rousseau and Easton, which had been erected under the first term of the patent, and the right to continue which they claimed during any extension of the grant; and, second, of a machine which Gibson had conveyed to Woodworth, and by him to Rousseau and Easton.

III. Woodworth, on the 19th of May 1842, agreed with *Rousseau and Easton to [*651 make an assignment to them by which they would become vested more fully with the right of running the machine in the town of Watervliet, which they claimed under the first term of the patent; and also to assign to them the right to use the other machine which had been conveyed to him by Gibson, of even date with this agreement. În consideration of which Rousseau and Easton paid at the time $200; and, in case the extension should be obtained, and assignment of the two machines, as above stipulated for, made, they would pay, in addition, $2,000, in four equal annual installments.

IV. This agreement of the 19th of May, 1842, was modified by an indorsement on the same, signed by all parties, 26th April, 1843, in which it was recited that Rousseau and Easton had, on that day, executed and delivered to Woodworth eight promissory notes, of $250 each, payable at different periods, the last one 1st July, 1846; in consideration thereof, the said Woodworth agreed that, upon payment of said notes as they became due, he would make the assignments stipulated for in the said agree

ment referred to.

V. On the 12th of August, 1844, Wooworth assigned all his interest in this contract with Rousseau and Easton in respect to the two machines, and all right and title to the use of the same, to J. G. Wilson, by which he took the place of Woodworth.

VI. On the 13th of November, 1844, Gibson renounced and released all right or claim, if any, to these two machines, to J. G. Wilson, this having been supposed necessary to enable Wilson to sue Rousseau and Easton for breach of their contract, or for an infringement of the Woodworth patent and extension by the use of the machines in the town of Watervliet after

refusing to fulfill their contract; Gibson claimed no right to the use of the two machines in said town, as he had already passed to Woodworth all the right which he ever had in the same. The release was given for abundant caution, the

lie except from a final decree. The only ques- | from, would take away property from one and tion is, what is the distinction between final give it to another, or work irreparable misand interlocutory decrees. The same princi- chief. 6 How. 202, 203, 206; 13 Peters, 15; 3 ple may be applied which governs the con- Cranch, 179; 2 Smith's Chan. Prac. 187, 188. struction of judgments at law; those are final which grant a remedy upon the whole matter, and dismiss a party from the court. But in equity there is some difficulty, owing to the different nature of the relief which is granted. A final decree in equity may be defined to be one which definitively adjudges the whole subject matter; an interlocutory decree, one which disposes of some parts and reserves others for future decision. 2 Daniel Ch. Pr. part 2, pp. 631, 632, 635, 638, 641, London ed. of 1840. The present decree is not final, when tested by the principles laid down by Daniel.

1. It expressly reserves the question of costs. They do not depend upon any statute, but upon judicial discretion.

2. It does not determine the amount of damages, but refers the subject to a master to ascertain and report.

3. Even if the master decides, still the decree does not adjudge them to be according to the report.

4. It does not settle any principles upon which damages can be computed; whether they are for one machine or two, etc.

5. It reserves a decision upon the rights of the respective parties. The complainant offered, in his bill, to pay $2,000; the decree says he shall do so, but does not say whether it is an extinguishment of the claim, or only a set-off.

6. The bill prays that the machines and their produce may be delivered to the plaintiff; but the decree is silent upon this point. The question is reserved. It may be said that a perpetual injunction is decisive of the rights of the parties. But it is only an order, which the court may revoke at any time. It cannot be pleaded in bar. We think the parties are still in court.

7. The decree does not give all the relief which is prayed for in the bill. Whatever is asked and not granted is left undecided, because the bill is not dismissed as to that.

[Mr. Seward then commented on 10 Wheat. | 502; 11 Wheat. 429; 8 Peters, 318; 9 Peters, 655*] 1; 6 Cranch, 51; 15 * Peters, 287; 2 How. 62; 5 How. 51; 6 How. 203; Ib. 208, 209.1

Mr. A. Taber, against the motion:

The decree in question would do both. It was intended by the Circuit Court finally to adjudge and determine the patent rights in controversy. It takes them away from the defendants, and vests them in the complainant; and, by the perpetual injunction it directs, immediately renders worse than valueless-an incumbrance upon the ground-the expensive erections of the defendants for their enjoyment.

For the costs of the cause, no appeal would hereafter lie. 4 Russell, Ch. 180; 3 Peters, 307, 319; 2 How. 210, 237. The other matters reserved are merely in execution of the decree already passed. Before these matters could have been adjusted, and an appeal prosecuted to effect, our patent rights would have expired by their own limitation, and nothing remain for the appellate offices of this court but a post mortem examination of our rights for the vindication of abstract law.

The perpetual injunction, the main relief prayed, is a final execution; not the mere extension of a preliminary injunction, which latter has been repeatedly denied in this cause, and is wholly inapplicable to a contest between assignees under the same patent, which is, therefore, no more prima facie evidence for one party than the other. 4 Burr, 2303, 2400; 1 Vernon, 120; Ib. 275; 7 Ves. 1; 3 Meriv. 622; 14 Ves. 130-132; Drewry on Injunctions, 223, sec. 5, 221, sec. 3, 223, sec. 4; Eden on Injunctions, 207.

*2. But if this is not a case for an [*656 appeal under the act above cited, it assuredly must be one of "all other cases," provided for by the seventeenth section of the Patent Act of 1836, chap. 747. In patent causes, evidently for the reasons above alluded to, there is no limitation of an appeal except the safe one, that "the court shall deem it reasonable to allow the same." If the act means this honorable court, this appeal has been allowed by it, by one of its justices at chambers. If, as is more probable, the Circuit Court was intended (6 How. 458, and note, and 477), then Justice Nelson, being a quorum of that court (Laws of 1837, chap. 801, sec. 3), acted as such, judicially, in allowing it at chambers. 1 Brock. 380. Or if error has occurred in the manner of taking this appeal, no statute restriction being in the the way, it should be allowed, in furtherance of justice, to be amended now. Laws of 1789, chap. 20, sec. 32; 16 Peters, 319; 7 Wend. 508. And this, according to the last cited case, would be properly done by simply denying this motion.

1. The decree in question is a "final decree," upon a sound construction of the Judiciary Act of 1803, chap. 93, sec. 2. The fundamental purpose of this act was to give an appeal, if required, where the amount in controversy was sufficient, to the end that the substantial rights of parties should not be finally disposed of by 3. If it be replied to the last point, that this circuit courts. Not so of the English statutes is not a case arising under the patent law, but of limitations, authorities construing which under the common law of contracts and ashave been cited on the other side. Their lead-signments, then the Circuit Court never had ing object was, not to give or take away an appeal, but to restrict by a short limitation appeals taken pendente lite, allowing a longer one to those taken after the cause was ended. Wherefore, the words "final decree," in these English acts, are justly interpreted to mean one which is a finis of the cause, and in our act, one which is a finis of substantial rights of the parties, which, unless immediately appealed

jurisdiction, the cause being between residents of the same State, and an appeal lies at any time, to reverse its decision already made, and dismiss the cause. 2 How. 244, 3 Ib. 693; 8 Peters, 148; 16 Ib. 97; 3 Dallas, 19.

Mr. Justice McLean delivered the opinion of this court:

This is an appeal from the decree of the Cir

cuit Court for the Northern District of New | injury. The bill was dismissed as to the prinYork. cipal matters in controversy, and there was a decree for costs.

The parties claim conflicting interests as assignees of Woodworth's patented planing maIt is said that the decree in this case, by enchine. The cause was submitted to the circuit joining the defendants below from the use of judge, who decreed, that the defendants below their machines, destroys their value and places be perpetually enjoined from any further con- the defendants in a remediless condition. That structing or using in any manner the two plan- in the course of a few months their right to run ing machines, etc., and the case was referred to the machines will expire, and that no reparaa master to ascertain and report the damages tion can be obtained for the suspension of a which the plaintiff has sustained, arising from right by the act of the court. It is alleged, the infringement of his rights by the defendants too, that many thousands of dollars have been by the use of the said two machines. The re-invested in machinery, which by such a procedport of the master to be made in term time, or ure becomes useless.

A motion is made to dismiss this appeal, on the ground that the decree is not final.

to one of the judges at chambers in vacation, *The hardship stated is an unanswera- [*658 and on ten days' notice either party to move able objection to the operation of the injuncfor confirmation of the report, etc. The question, until all the matters shall be finally adtion of costs was reserved until the coming injusted. If the injunction has been inadvertof the report, etc. ently granted, the Circuit Court has power to suspend it or set is aside, until the report of the master shall be sanctioned. And unless the defendants below are in doubtful circumstances, and cannot give bond to respond in damages for the use of the machines, should the right of the plaintiff be finally established, we suppose that the injunction will be suspended. Such is a correct course of practice, as indicated by the decisions of this court, and that is a rule of decision for the Circuit Court. The appeal is dismissed.

No point is better settled in this court, than that an appeal may be prosecuted only from a 657*] final decree. The cases are numerous where appeals have been dismissed, because the decree of the Circuit Court was not final. It is supposed there was a departure from this uniform course of decision, at the last term, in the case of Forgay et al. v. Conrad, 6 How. 201.

In that case the court says: "The decree not only decides the title to the property in dispute, and annuls the deeds under which the defend

ants claim, but also directs the property in dispute to be delivered to the complainant, and awards execution. And according to the last paragraph in the decree, the bill is retained merely for the purpose of adjusting the accounts referred to the master. In all other respects, the whole of the matters brought into controversy by the bill are finally disposed of as to all of the defendants, and the bill as to them is no longer pending before the court." "If these appellants, therefore, must wait until the accounts are reported by the master and confirmed by the court, they will be subjected to irreparable injury."

The decree in that case would have been executed by a sale of the property, and the proceeds distributed among the creditors of the bankrupt, and lost to the appellants, before the minor matters of account referred to the master could be adjusted and acted on by the court. The course of procedure in the Circuit Court was irregular, and the consequent injury to the defendants would have been irreparable. Effect should not be given to its final orders by the Circuit Court, until the matters in controversy shall be so adjusted as to make the decree final. Any other course of proceeding will, in many cases, make the remedy by an appeal of no value.

The decree in the case under consideration is not final, within the decisions of this court. The injunction prayed for was made perpetual,

but there was a reference to a master to ascer

a

tain the damages by reason of the infringe-
ment; the bill was not dismissed, nor was there
decree for costs. In several
several important
particulars, this decree falls below the rule
of decision in Forgay v. Conrad. The execu-
tion of the decree in that case would have in-
flicted on the defendant below an irreparable

Order.

This cause came on to be heard on the tran

script of the record from the Circuit Court of the United States for the Northern District of New York, and was argued by counsel; on consideration whereof, and it appearing to the court here that the decree of the court below complained of is not a final decree within the meaning of the act of Congress, it is thereupon now here ordered and decreed by this court that this cause be, and the same is hereby dismissed for the want of jurisdiction.

THE UNITED STATES, Appellants,

V.

THE HEIRS OF LOUIS BOISDORE.1

Practice-appeal.

The meaning of the forty-third rule of this court is, that, if a judgment or decree in the court below be rendered more than thirty days before the commencement of the term of this court, and the record be not filed within the first six days of the term, the appellee or defendant in error may docket the case, and move for its dismissal as the rule prescribes.

But if the judgment or decree of the court below be rendered less than thirty days before the commencement of the term of this court, the rule does not apply.

THIS was an appeal from the District Court of the United States for the Southern District of Mississippi.

Mr. Fendall moved to dismiss the appeal, upon the grounds stated in the opinion of the court; which motion was opposed by Mr. Toucey (Attorney-General).

Mr. Justice McLean delivered the opinion of | THE STATE OF MISSOURI, Complainant,