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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


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.


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,



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.

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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

better to secure to Wilson the right which he had acquired by the assignment from Woodworth.

VII. On the 5th of December, 1845, J. G. Wilson granted to F. J. Barnard & Son a license to construct and use two machines in the town of Watervliet, for which he was to receive $4,000; but it was then and there agreed, that, if the decision of the Supreme Court of the United States, in a case then pending between Wilson and Rousseau and Easton, should be against Wilson, so as to exclude him from the use of the said two machines in the said town, then he was to repay to Barnard & Son $2,000, paid to him on that day in part 652*] *satisfaction of the purchase money; but if the decision should be in favor of Wilson, and Barnard & Son should be put in possession of the right to erect and use the two machines in said town, then they were to pay to Wilson a further sum of $2,000.

VIII. Upon the foregoing state of facts, and upon the pleadings and proofs in the case, it is quite clear, that, down to the time of the grant of Wilson to Barnard & Son, the 5th of December, 1845, Gibson, the complainant, possessed the exclusive right and title to the planing machine in and for the County of Albany, with the exception of the two rights in the town of Watervliet, namely, the right to use one claimed by Rousseau and Easton, under the first grant, and more effectually secured to them by Woodworth, and the one sold and assigned by Gibson to Woodworth, and by him to Rousseau and Easton.

And, further, that Wilson possessed no interest in any right to the use of the planing machine in the town of Watervliet, except in the two so derived from Woodworth by assignment of the 12th of August, 1844, and which had before been sold to Rousseau and Easton, and of which they were in the actual use and enjoyment. Wilson therefore could grant his interest, whatever it might be, in these two rights, and nothing more; and this was all that could pass to Barnard & Son under the grant of the 5th of December, 1845. The terms of that agreement also establish, that it was the interest of Wilson in these two rights which he intended to sell, and Barnard & Son to pur


IX. The failure of Rousseau and Easton to fulfill their agreement of purchase with Woodworth, the interest in which belonged to Wilson, did not, of itself, operate to annul and cancel the contract. It was a contract partly executed; $200 of the purchase money had been paid, and promissory notes given for the residue. The machines had been erected, and were in operation; and although a court of equity might have decreed the contract to be delivered up and cancelled upon terms, until then Rousseau and Easton must be deemed in the lawful use and enjoyment of the two rights under the patent. And even assuming the contract to be annulled, and the parties remitted to their original rights, it is clear that Wilson had power to grant but one of the rights in said town of Watervliet, as the other was secured to Rousseau and Easton, under the decision of the court in Wilson v. them.

An injunction was accordingly issued.
On the 11th of April, 1848, the Circuit Court

of the United States for the Northern District of New York was in session at Utica, when the following decree was passed:

*"This cause having been brought [*653 on to be heard upon pleadings and proofs, and Mr. William H. Seward having been heard on the part of the plaintiff, and Mr. Marcus T. Reynolds on the part of the defendants, and due deliberation having been had, it is ordered, adjudged and decreed, that the defendants in this cause be, and they hereby perpetually enjoined from any further constructing or using in any manner, and from selling or disposing in any manner, of the two planing machines mentioned in said bill as erected by them in the town of Watervliet, in the County of Albany, or either of said machines, which machines are machines for dressing boards and plank, by planing, tonguing or grooving, or either, or in some separate combination, constructed upon the principle and plan specified and described in the schedule annexed to letters patent issued to Wm. W. Woodworth, administrator of William Woodworth, on the 8th day of July, 1845; which letters were a renewal upon a formal surrender for an imperfect specification of letters patent issued to Wm. Woodworth on the 27th day of December, 1828, and extended on the 16th day of November, 1842, to take effect on the 27th day of December, 1842, and again extended by act of Congress on the 26th day of February, 1845, and from infringing upon or violating the said patent in any way whatsoever.

"And it is further ordered, adjudged and decreed, that it be referred to Julius Rhodes, Esq., of Albany, counselor at law, as a master pro hac vice in this cause, with the usual powers of a master of this court, to ascertain and report the damages which the plaintiff has sustained, arising from the infringement of his rights by the defendants, by the use of the said two machines by them.

"And it is further ordered, that the report of the said master herein may be made, either to this court in term time, or to one of the judges thereof at chambers in vacation; and that either party may, on ten days' notice to the other of time and place, apply, either to this court in term time, or to one of the judges thereof at chambers in vacation, for confirmation of such report.

"And it is further ordered, that either party may at any time, on ten days' notice of time and place to the other, apply to this court in term time, or to one of the judges thereof in vacation, for further directions in the premises. "And the question of costs, and all other questions in this cause, are hereby reserved until the coming in of the said report.

"And the complainant shall either pay to the defendants, or set off against the damages to be awarded, the sum of two *thousand [*654 dollars, which he offered in his bill to pay them, with interest from the 5th day of December, 1845."

An appeal from this decree brought the case up to this court.

Mr. Seward moved to dismiss the appeal, upon the ground that the decree was not a final one; which motion was opposed by Mr. Taber.

Mr. Seward stated the case, and then said that it was admitted that an appeal would not

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.

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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


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


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 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).

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

the court:

This is an appeal from the decree of the District Court for the Southern District of Mississippi.

659*] *The bill was filed against the United States, under the acts of June 17, 1844, and May 26, 1824, to try the validity of the complainants' claim to certain lands in Mississippi. At the November Term of the District Court, 1847, a decree was entered in favor of the petitioners, and at the same term an appeal to the Supreme Court of the United States was granted by the District Court, on the application of the defendants. An appeal thus allowed requires no notice to the appellee. A motion is now made to dismiss this appeal, on the following grounds:

1. Because the appeal is not made to any specified term of the Supreme Court.

2. Because it is not made returnable to the term of the Supreme Court next following the decree.

3. Because the record is not filed at the term of the Supreme Court next following the de


Under the Act of 1824, the party against whom the decree is entered may appeal within one year. On the 14th of March, 1848, a transcript of the record was made out, and it was filed in this court at the present term. From the time this decree was entered, to the commencement of the ensuing session of the Supreme Court, there were less than thirty days. And under such circumstances it appears, by the forty-third rule, that the appellant was not required to file the transcript of the record in this court at the first term.

The rule provides, that, "in all cases where a writ of error, or an appeal, shall be brought to this court from any judgment or decree rendered thirty days before the commencement of the term, it shall be the duty of the plaintiff in error or appellant, as the case may be, to docket the cause and file the record with the clerk of this court within the first six days of the term." If this be not done, the other party, on producing the proper certificate, may have the cause docketed and the appeal or writ of error dismissed.

The rule does not operate where a decree is entered less than thirty days before the term of this court, and consequently the cause is not liable to be docketed and dismissed. The appellants, under the circumstances of this case, are chargeable with no neglect for failing to file the record with the clerk at the first term of the Supreme Court after the decree was entered.

The motion to dismiss is overruled.


On consideration of the motion to dismiss this cause, made by Mr. Fendall, on a prior day of the present term of this court, to wit, on Friday, the 2d instant, and of the arguments 660*] of *counsel thereupon had, as well in support of as against the motion, it is now here ordered by this court, that the said motion be, and the same is hereby overruled.


THE STATE OF IOWA, Respondent.

THE STATE OF IOWA, Complainant,



Boundaries between Missouri and Iowa-in suit between States on question of boundary, proper mode of pleading is by bill and cross bill.

The western and northern boundary lines of the State of Missouri, as described in the first article of

the Constitution' of that State, were as follows: From a point in the middle of the Kansas River, where the same empties into the Missouri River, running due north along a meridian line, to the intersection of the parallel of latitude which passes through the rapids of the River Des Moines, making said line correspond with the Indian boundary line; thence east from the point of intersection last aforesaid, along the said parallel, to the middle of the channel of the main fork of the said River Des

Moines, thence, etc., etc.

The Constitution of the State of Missouri was

adopted in 1820. But in 1816, an Indian boundary line had been run by the authority of the United States, which in its north course did not terminate at its' intersection with the parallel of latitude which passed through the rapids of the River Des. Moines, and in its east course did not coincide with that parallel, or any parallel of latitude at all. Missouri claimed that this north line should be continued until it intersected a parallel of latitude which passed through certain rapids in the River Des Moines, and from the point of intersection be run eastwardly along the parallel to these rapids. Iowa claimed that this Indian boundary line was protracted too far to the north; that by the term "rapids of the River Des Moines" were meant certain rapids in the Mississippi, known by that name, and that the parallel of latitude must pass through these rapids; the effect of which would be to stop the Indian boundary line in its progress north, before it arrived at the spot which had been marked by the United States surveyor.

There being a bill and a cross bill, each State is a defendant, and this court can pass such a decree as the case requires.

The southern boundary line of Iowa is coincident with, and dependent upon, the northern boundary line of Missouri.

Iowa is bound by the acts of its predecessor, the government of the United States, which had plenary jurisdiction over the subject as long as Iowa remained a Territory; and the United States recognized the Indian boundary line, 1st. By treaties made with the Indians; 2d. By the acts of the general land office; 3d. By Congressional legislation. On the other hand, there are no rapids in the River Des Moines so conspicuous as to justify the claim of Missouri.

This court therefore adopts the old Indian boundary line as the dividing line between the two States, and decrees that it shall be run and marked by commissioners.

THEtate of Iowa, in the Supreme Court of

HE State of Missouri filed a bill against the

the United States, with the consent of the State of Iowa, in order to settle a controversy which had arisen respecting the true location of the boundary line which divided the two States.

The origin of the controversy is so fully stated by Mr. Justice *Catron, in deliv- [*661 ering the opinion of the court, that it is only necessary for the Reporter to explain the pretensions of the respective parties according to the map, without which they cannot be understood. This map or diagram [see next page] is only intended to be illustrative of these claims, without pretending to be geographically accurate.

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