ERASTUS CORNING, JOHN F. WINSLOW, AND JAMES HORNER, APPELLANTS,
v.
THE TROY IRON AND NAIL FACTORY.
Supreme Court of United States.
*459 It was argued by Mr. Stevens and Mr. Johnson, for the motion, and Mr. Seymour and Mr. Seward against it.
*464 Mr. Justice GRIER delivered the opinion of the court.
The Troy Iron and Nail Factory filed their bill in the court below, claiming to be assignees of a patent granted to Henry Burden, for a "new and useful improvement in the machinery for manufacturing wrought nails or spikes." The bill charges, that the appellants, Corning & Company, have infringed their patent, and prays for an injunction and an account of profits, &c. The answer of the respondents below took defence on two grounds first, that Burden was not the first and original inventor of the machine patented; and, secondly, that the respondents used their machine under a license from the patentee. The court below sustained the defence on the latter ground, and entered the following decree: "Therefore, it is ordered, adjudged, and decreed, that the said bill of complaint is hereby dismissed, with costs to be taxed, and that the defendant have execution therefor."
The case is now before us on a motion to dismiss the appeal. Looking at the case as exhibited to us by the record, it appears to be an appeal by respondents from a decree dismissing the complainant's bill with costs. It often happens that a court may decree in favor of a complainant, but not to the extent prayed for in his bill, and he may have just cause of appeal on that account. But the prayer of the respondent's answer is, that "he be hence dismissed, with his reasonable costs and charges, on this behalf most wrongfully sustained." And having such a decree on the present case, he cannot have a more favorable one.
It is true that the petition for the appeal in this case prays only, "that so much of such parts of said decree, as declares, orders, adjudges, and decrees as follows, to wit, "And it appearing *465 to the said court that the said Henry Burden was the first inventor of the improvement, &c., may be reversed, and that the appellants may be restored to all things which they have lost by reason thereof."
But the matter complained of forms no part of the decree of the court below.
It shows only, that the judge, in reciting the inducement or reasons for entering a decree in favor of the respondents below, was of opinion that they were entitled to such decree, because they had succeeded in establishing one only of the two defences alleged in their answer. It is the opinion of the court, on a question of fact involved in the case, but not affecting the decree. If the decree be correct, the party in whose favor it is given, has no right to complain; yet his appeal prays that it "may be reversed, and the appellants restored to all things which they have lost by reason thereof;" and the record shows they have lost nothing.
If the decree be reversed, according to the prayer of the appellants, the court must necessarily enter a decree for the complainants below. This would, probably, not meet the views of the appellants. They have put themselves in the anomalous position either of asking for the affirmance of the decree from which they have appealed, or of requesting this court to reverse a decree in their favor, and send back the record to the court below, with directions to enter the very same decree, but to assign other reasons for it. The court were not bound to give any reasons for their decree. The law gives the party aggrieved an appeal from a final decree of an inferior court. But it does not give the party who is not aggrieved an appeal from a decree in his favor because the judge has given no reasons, or recited insufficient ones for a judgment admitted by the appellant to be correct.
There is a part of the history of this case which does not appear on the record; but, being known to the court, and assumed by counsel on both sides to make part of the case, it will be necessary to notice the case under that aspect.
The decree in favor of the appellants, which is now appealed from, has already been before this court on an appeal by the complainant below. The parties were then fully heard, the decree of the Circuit Court reversed, and the case remanded for further proceedings. It is reported in 14 Howard, 194. It appears, therefore, that there is no such decree as that which is now complained of. The decree of the Circuit Court has been entirely annulled, reversed, and set aside by this court. Before that was done, the appellants had a full hearing on every point of defence set up in their answer. The court below had decided *466 that the defendant had a good defence under his plea of license, but not under the plea that Burden was not the first inventor of the patented machine. This court has decided, that the appellant's defence was insufficient on both pleas. The language of the court is, (14 How. 208,) "That the defendants have failed to prove that Burden was not such first inventor; and, in our opinion, the evidence given by them on that point rather serves to establish the originality of the invention than to impair it. The appellants stand upon the patent, as the first which was granted for the bending lever; and they may well do so, until other evidence than that in this record shall be given to disprove its originality."
It is plain, therefore, that, under the guise of an appeal from the decree of the Circuit Court, this is an appeal, in fact, from the decision of this court. For there is no other decree existing in the case except the decree of this court. There must be an end of litigation some time. To allow a second appeal to a court of last resort, on the same questions which were open to dispute on the first, would lead to endless litigation. It is said by this court, in Martin v. Hunter, (1 Wheat. 355,) "A final judgment of the court is conclusive upon the rights which it decides, and no statute has provided any process by which this court can revise its judgment." See, also, Sibbald v. United States, 12 Pet. 488. It follows, therefore, that, when a complainant has a decree in his favor, but not to the extent prayed for in his bill, and the respondent appeals; if the complainant desires a more favorable decree, he must enter a cross appeal, that, when the decree comes before the appellate court, he may be heard. For, when the decree is either affirmed or reversed by the appellate court, it becomes the decree of that court, and cannot be the subject of another appeal. But, in this case, where the decree of the court below dismissed the bill, no appeal by the respondent was necessary. He had a full opportunity to urge every defence set up in his answer. The printed arguments show that the defence, for want of originality in the patent, was relied upon as a ground for affirming the decree of the court below, and, as we have already shown, was distinctly passed upon and overruled by this court.
A second appeal lies only when the court below, in carrying out the mandate of this court, is alleged to have committed an error. But, on an appeal from the mandate, it is well settled, that nothing is before the court but the proceedings subsequent to the mandate. Whatever was formerly before the court, and was disposed of by its decree, is considered as finally disposed of. See Himely v. Rose, 5 Cranch, 313; Canter v. The Ocean Insurance Company, 1 Peters, 511; The Santa Maria, 10 Wheat. 431; Rice v. Wheatly, 9 Dana, 272.
*467 Moreover, as it is admitted that the court below have not yet acted upon the mandate of this court, and entered a final decree in pursuance thereof, there is no final decree, from which only an appeal can be taken. See the Palmyra, 10 Wheat. 502; Chace v. Vasquez, 11 Id. 429.
There are, therefore, three conclusive reasons for dismissing the present appeal:
1. The appellants have already been heard in this court on a former appeal.
2. There is no such decree as that from which the appeal purports to be taken.
3. There is no final decree in the case, from which an appeal can be taken.
The appeal is therefore dismissed.
Order.
This cause came on to be heard on the transcript 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, it is now here ordered, adjudged, and decreed by this court, that this cause be, and the same is hereby, dismissed, with costs.