In re Potts

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 Fed. 680.

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. 597, 610, 15 Sup. Ct. 194.

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 defedants, 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 amde 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, for reasons stated in its opinion reported in 71 Fed. 574, 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 Fed. 454.

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

E. W. Bradford and Chester Bradford, for petitioner.

Edward Boyd, for respondent.

Mr. Justice GRAY, after stating the case, delivered the opinion of the court.