Opinion
Henry D. Williams, of New York City, and O. W. McConnell, of Helena, Mont., for plaintiff.
Kremer, Sanders & Kremer, of Butte, Mont., and Sheridan, Wilkinson & Scott, of Chicago, Ill., for defendant.
BOURQUIN, District Judge.
After decision in Minerals Separation, Ltd., v. Hyde (D.C.) 207 F. 956, plaintiff brought this suit, alleging infringement of the patent upheld by said decision. On hearing for injunction pendente lite, the evidence was the record of the Hyde suit, save sufficient other to charge this defendant. The Hyde suit was then on appeal and soon to be argued, and this court denied the injunction sought on condition that defendant file a bond in the sum of $75,000, to secure plaintiff in damages and profits, if successful finally herein, and that defendant also file and perform an agreement to not expand its operations with the patent process, and to file monthly statements of such operations, pending suit. The order also recited that the parties might solicit modification if future conditions warranted. Defendant accepted the condition.
The appeal in the Hyde suit resulted in the reversal of this court's decree. See 214 F. 100, 130 C.C.A. 576. The Supreme Court granted certiorari (235 U.S. 701, 35 Sup.Ct. 202, 59 L.Ed. 432), and therein the cause was recently argued. In the meantime occurs the war, defendant's product (zinc) advances in price, defendant increases its output, and therefrom pays over $13,000,000 in dividends. Thereupon plaintiff moves herein for an increase of the bond aforesaid, or that defendant be enjoined from further dividends, from further 'increase in its plant,' and from sale or incumbrance of its property, pending suit. It suffices to say defendant files answer to the motion, and in addition moves that it be discharged from further performance of the order aforesaid
Reversed by Supreme Court, 242 U.S. 261, 37 Sup.Ct. 83, 61 L.Ed. . . . .
Plaintiff's motion is denied, and the motion of defendant is granted. The Circuit Court of Appeals, having determined that plaintiff's patent is void for want of novelty, thereby established its said judgment as the law of the land, so far as this and all other courts of this circuit are concerned, in any and all cases wherein the evidence is substantially like that of, and so not fairly distinguishable from, the
Page 403.
Hyde Case, until by the Supreme Court that judgment is reversed. That the Supreme Court has said judgment under review in no wise weakens it as controlling authority in this circuit, nor relieves this court of the plain duty to accept and follow it until reversed. See Railway v. Bank, 60 Barb. (N.Y.) 234; Cement Co. v. Riser (Tex. Civ. App.) 137 S.W. 1188.
To do otherwise would violate the settled law of the relations that subsist between subordinate and appellate courts, would substitute disorder for order in litigation, and would bring doubt and confusion to the exercise of rights. No legal principle or case is cited to the contrary. It is true the judgment of the Circuit Court of Appeals by certiorari has been superseded, but only in so far as acts are required to execute said judgment. For in so far as its self-executing quality is concerned-- that is, establishment of law for this circuit-- that was accomplished, executed on its rendition and before certiorari, and remains law to this day undisturbed by the certiorari.
As this suit now appears, defendant's user of the process involved is rightful before the law and without condition, and plaintiff has no cause of action; and though the future may demonstrate the contrary, the court's authority to afford plaintiff security cannot be invoked and lawfully exercised in speculative anticipation, but only when that time arrives. The law as it is when orders are made dictates their nature, and not the law as it is hoped for, or later may be. It now appearing the aforesaid condition, imposed upon and accepted by defendant, was from mistake of law and without consideration, defendant is rightfully relieved from it. No other feature now requires comment.