US SUPREME COURT DECISIONS

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. chanrobles.com-red

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.6d 0.

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 chanrobles.com-red

Page 166 U. S. 265

for reasons stated in its opinion reported in 71 F.5d 4, 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.4d 4.

All the decrees and orders of the circuit court above mentioned were made by Judge Sage.