(dissenting).
The Supreme Court has held that, where presented, the issue of the misuse of a patent, against the public interest, is “dominant.” The words of Mercoid Corp. v. Midcontinent Investment Co., 320 U.S. 661, 665, 64 S.Ct. 268, 271, 88 L.Ed. 376, are that it is not the private use but “the public interest which is dominant.” Cf. Vitamin Technologists v. Wisconsin Alumni Research, 9 Cir., 146 F.2d 941, 944.
Where the dominant public interest is violated the court will refuse all equitable relief, here the equitable relief of injunction and accounting. Mercoid Corp. v. Mid-continent Investment Co., supra, 320 U.S. 661, 670, 64 S.Ct. 268, 88 L.Ed. 376. Such a dominant interest will be protected sua sponte by an appellate court where it discovers such violation. Beasley v. Texas & Pac. R. Co., 191 U.S. 492, 498, 24 S.Ct. 164, 48 L.Ed. 274.
It is apparent that if the complaint here had tendered such a dominant issue, with the issues of validity and infringement, *346and on a motion to dismiss that issue had been decided adversely to the plaintiff, and the issues of validity and infringement held for the plaintiff and an accounting ordered, the decision of the issue of public misuse would have been “final except for an accounting” within 28 U.S.C.A. § 227a.
Such a .dominant issue was presented to this court. We referred it to the district court with the power to entertain and decide that issue through the medium of a motion to deny the equitable relief of an accounting. The district court entertained a motion for the decision of that dominant issue and its adverse decision adjudicated it finally, except .for an accounting. Its order was a final decision, except for an accounting. There was nothing else for the lower court to do.
I dissent from the holding that the denial of that motion is not a final decision on the dominant issue because it was presented in such a motion. This is a clear case of obscuring in the form the essence of what, under our order, the lower court undertook and did.
To say, as the opinion does, that the order would be final and appealable if it had been decided the other way, makes clear that the court’s opinion is not thinking of what the issue was that was decided but of the form of procedure in which the issue was presented.
Moreover, our order gave the lower court the power “to take such action thereon as it may determine.” The lower court did more than entertain the motion to deny the equitable relief of accounting. It entertained and denied appellant’s motion to dismiss the dction, not the judgment. This is what the court could have done sua sponte. While in other than patent litigation such a denial of a motion to dismiss, on a ground requiring dismissal if valid, is not appealable, in a patent suit where nothing remains but the equitable relief of accounting, it is appealable.
No one of the cases cited to the proposition of the lack of appealable finality in an order denying a motion to vacate an order, is a patent case in which the lower court had been permitted to decide the dominant issue of public misuse. None had presented, much less considered, the situation where the motion for the first time presents the issue of public misuse — an issue, as seen, to be injected into the case by the appellate court sua sponte at anytime— requiring the setting aside of the order as a mere incident of dismissing the action for equitable relief in its entirety.
The appeal should be entertained.
Rehearing denied; DENMAN, Circuit Judge, dissenting.