On Petition for Rehearing.
(March 9, 1897.)
PER OFRIAM.
These cases involve an appeal and a cross appeal, or they may be described as cross appeals. The appellees in one appeal, who were also- the appellants in the other, moved to dismiss the appeal in which they were the appellees on the ground that the fiause of action, therein had been extinguished by a settlement thereof. On opening Ok1 record, we found that the cause of action had been so far disposed of by an adjustment between the parties that there was no substantial question left for this court. Tills fact, of course, as the parties are the same in each, affected one appeal as much as it did the other. Consequently we granted the motion in the very terms in which it was expressed; and this, if correctly done, necessarily carried both appeals. The opinion directing the dismissal of the appeals was passed down November 10, 1806. The principles underlying it have since been reinforced by us in Gamewell Fire-Alarm Tel. Co. v. Municipal Signal Co., 23 C. C. A. 250, 77 Fed. 490. Tlie appellants seasonably filed a petition for a rehearing, claiming that, so far, at least, as the appeal taken by them was concerned, the decree below should hare been reversed, and the appeal should not have been dismissed. This position involved a clear inconsistency, as the two appeals, so far as this matter is concerned, necessarily vrent hand in hand. However, in order to protect ourselves from entering judgments which may be improper on their face, we were disposed to look into their propriety under the actual circumstances of the case, and therefore we ordered that all the parties might be heard by briefs on the petition for a rehearing. These briefs have been filed and duly considered. The adjustment was made after an interlocutory decree for an injunction, and for an accounting, on a bill in equity which related to the unauthorized use of a patented device in a single machine by the respondents below, who were not manufacturers, and who had indicated no disposition to make any use of the device except in that mac,bine. It included a license covering the machine, and a release of all damages, profits, and costs in the suit. Consequently, all controversy between the parties had ceased; and, if the adjustment had been properly pleaded, it is clear that the court below’ w’ould have had no occasion to consider the case further, and a final decree against the respondents below, whether for an injunction or otherwise, would have been erroneous. In this respect the case would have been essentially different from those in which it has been held that infringers cannot deprive a patentee of the just fruits of his litigation, including an injunction, by ceasing to infringe of their owm motion alone. As the adjustment wTas made áfter an interlocutory decree for an injunction and an accounting, it should, in strictness, have been brought formally to the attention of the court by supplemental proceedings, if relied on as a matter of right to bar a final decree. This was not, done. The record, howmver, shows that it was incorporated into the final decree by the complainant itself, through the draft decx-ee which it filed under the rules; and it is plain that its effect was a matter of controversy, and, as such, was brought to the attention of the court. All questions as to the proper method of setting it up were evidently waived, and no judgment should have been rendered against the respondents below. The adjustment satisfied all costs in the circuit court, and, under the circumstances we have stated, neither party is equitably entitled to any costs on appeal. The judgment on each’ appeal.must be the same, as we have already said. The petition for a rehearing is granted, and, having been fully heard, the judgment heretofore entered is vacated, the decree of the circuit court is reversed, and the case is remanded to that court, with directions to dismiss the bill because of accord and satisfaction, and without costs to either party in either court.