Russell v. Lathrop

Devens, J.

The defendant in review, the original plaintiff, relies only on an order that a bill in equity, alleging certain violations of the patent referred to in the written agreement, be taken pro eonfesso, as “ a decree or judgment establishing the validity of ” the patent. When this case was last before the court, it was not necessary to decide this question; but it should now be determined, for if no such decree or judgment, as was contemplated by the agreement, has been rendered, the defendant in review cannot maintain this action, and a discussion of other questions presented by the bill of exceptions would be superfluous.

As there can be no decree in the nature of a judgment in rem, which would, as against every one, establish that a patent was valid, it may properly be contended that any decree, which, as against a party alleged to have infringed the patent, established its validity, would be such as is called for by the agreement. The contract does not in terms call for a final decree, but that cannot be deemed a decree establishing the validity of the patent, which is a statement only that the defendant has admitted the allegations of the bill, and not an adjudication that, as against the defendant, the plaintiff has maintained his right. Something more is necessary than an interlocutory decree, even if the court, before whom the action was pending, might then, without notice to the defendant, proceed to a final decree.

An order that a bill be taken pro eonfesso is interlocutory and intended .to prepare the case for a final decree. Its effect is similar to that of a default in an action at common law, by which the defendant is deemed to have admitted all that is well pleaded in the declaration. The defendant has lost his standing in court, and is not entitled to notice of its further proceedings, but the matters set forth in the bill do not pass in rem judieatam until the final decree. The bill is still to be read, that the court may *303 then determine whether there is cause, upon the allegations, to decree for the plaintiff, and it by no means follows that such will be the deciee. Rose v. Woodruff, 4 Johns. Ch. 547 . Greary v. Sheridan, 8 Ves. 192. Frow v. De La Vega, 15 Wall. 552 . If damages are sought by the bill, or if an account is demanded, the case is to be referred to a master, and, upon the return of his report, the final decree may be against the plaintiff, notwithstanding the interlocutory order in his favor. Forbes v. Tuckerman, 115 Mass. 115 , and cases cited.

It is not an answer to say that, if the proceedings are examined in the case in which the order taking the bill pro confessa was entered, they will be found to be regular, and such as entitle the plaintiffs therein to a final decree for damages and an injunction against the defendants. Showing that the plaintiffs in such suit are entitled to a decree establishing the validity of the patent is quite a different thing from showing that it has been rendered. The latter proposition must be proved before the defendant in review can maintain his action.

Judgment on the verdict.