WATSON
81
WATSO:N y. STEVENS etaI. (Circuit CoVrt of Appel\ls, First Circuit. October 29, 1892.) BILL OF REVIEW-AppEAL-MANDATE.
After the decision of. an appeal it was. made to appear by suggestion of counsel in open court. and by a verified petition supported by affidavits. that counsel for'tile defeated party. conceived himself entitled to make application for leave to, file a bill of review. Held, that the circuit court of appeals would not itself determine the right of such party to file the bill, but would, in ita mandate"resene.to him liberty to file an application therefor in the circuit court. and to proceed thereon and on the bill of review, aa the circuit court might determine.'.
from 1;Jle. Circuit Court of the United States for the District of 'Massachusetts. ;InEquity. Bill by .Jllremiah M. Watson against GeorgeH. Stevens and othera fQrinfringement of letters patent No. 367,484, issued August 2, 1887, to the complainant,for the "method of" and apparatvs for compressing shank Thecircu:\tcourt held that the alleged inve)ltion consisted only of the mechanical adaptatiolJ. of.ljIrell-knpwn machines anll processes toa new use, and dismissed the bill., 4'l'.Flld. Rep. 1,17. The complainant appealed tQ tb,ia court, which, on Se.p,tember 6,1892. rendered the following decision, (see 51'Fed; Rep. 757:) Thede<;ree of tbe circuit courtis reversed. The first, and sixth claims of complainant's'Pl\tent are 8ustainedfor use in producing shank stiffeners fromlea\her board; and the case is remanded to the circuit court, with instructions to enter a decree fOr complainant for an accounting, and for a perpetual injunction against making, vending, or usinft' for producing shank stiffeners from leather board, any machine or method IDfringing the first or sixth claims; and for other proceedings in conformity with this opinion; the complainant to recover his costs in this and the circuit court. " Thereafter, on September 28, 1892, the appellees (defendants below) filed in the circuitcourtof appeals a petition supported by affidavits alleging that, since tbe pUblication Of the opinion on the merits of the appeal, they had discovered the existence and use of two machines for more than two years prior to the applica· tion for the patent, which machines were an anticipation of the alleged invention. The machines were described in full, and the petition alleged that their existence and use. we,r,e well known to complainant before applying for his patent. The relief prayed was: "(1) That this case be reopened for the of introducing the newly-discovered evidence herein referred to. (2) That this,fase be remanded to the circuit court, with instructions that the case be reopened for the purpose of introducing the newly-discovered evidence herein referred to. (3) That the decree in this case shall be without injunction, or that injunction proceedings shall be suspended until such time as your petitioners shall have an opportunity, when the case is remanded.to the circuit court for further proceedings. to move in that court for the reopening of the case for the introduction of the neWly-discovered evidence herein referrell to; and, in case said motion is granted by said circuit court, that the injunction proceedings sball l)e suspended, pending the final determination of the cause on the new evidence. (4) That th'e decree in this case shall not beeqtered or recorded, and that all proceedings therein shall be stayed pending the COnsideration of this petition. (5) Your petitioners pray for such other or further relief in the premises a.s to tbis court may seem meet, and as is req\lired by the principles of equity and good conscience." The 8PJllillant thereafter filed 8 motion to strike this petition and its accompanying' affidavits from the files, which motion was heard before Colt and Putnam. cirC1;lit judges, and Aldrich. district judge. At this hearing the court suggested that under the decision in Southard v. Russell. 16 How. 547.571, permission ahould be obtained by application to the circuit court of appeals to file a bill of review or supplemental bill in the nature thereof, and thereupon couDsel were granted leave to file briefs on the question of the appropriate procedure.
Frederick P. Fish and W. K. Richardson, for appellant. At the ;hearing it was suggested by the court that under the decision in Southard v. Russ,eU, 16 How. 047,571, permission to file a bill of review or a supple
mental bill in the nature tJiereof be obt":ined ,bY' application to the appel· late court. Upon examinMion of that case Il.nd 'all other cases we could find, we frankly aIlPJElarsto be the law. , (For w/iwill speak of defendaiil.'srem:edy as a "oill of review." though it is technicaUy iI "supplemental bill in the nature of a bill of review, for the same rules apply to both.) ',The petitionofdflfendants; (appellees,) however, is entirely insufficient to be taken as a petitidrifor leave ,to' file a bill of review which Is·of a definite form. See' Daniell,Om' Pl. (5th Ed;) 'po 1578, note 1. We do not, however, desire to Ol>poseany teohn.ioal objections, but we submit that the petition ought to be ;&mendedtoclearly statewhlt,tit desires. As it stands,it gave no notice whatever ,to U8 that'leave totil0 abillof,roview was to be applied for; and, as,we therefore .:f!led·,amotion to suppre81l,we aubmit' that we should be allowed costs on the motion and argument, as is done when a bill of complaint is amended after demurrer., " " '," " ", . Trel1t1ng this petition, then, as amended into a petition for le'ave to file a bill of review, a difficulty at once occurs, namely, is the question whether a bill of revie\V, should be allowed to PatHed to be decided by the circuit court of appeals or by'the circuit court? I't'w!is suggested by the court at the argument that the application to tile merely formal, and leave,would be granted as of , This. can be so, only if the Itppellate court simply reserves to de· f,end,a,Qt tnerl,g,h,t,to, apPly, to,th" 'circuit court for leave to tile, for it is plain that the prelimln:arrquestion.sof dIlIgence and materiality must be settled by some court ',to file is finally granted. This will appear from the following considerations: , ' "" " ' It is wellestaplished generl!olly1that granting of leave to file a bill of review is not a Illatterof course. "Tlregrantlng of SU,ch a bill of review for newly-dise is,' not a mllPerOf, righ, t, but it rests in, the, sou,nd, ,discretion of the court. "St<\,ryl Eq, PI. (10th Ed.) § 417; 2 Daniell. Ch. PI. (5th Ed.) p. 1577, Dote 2. Is expr!lsslyetated by Mr. Justice Story in the case on bills of rllvill'Y.. ,.Dexter v.Arnold, 5 MalilOp., 803, 815. ',. The principal preliminary question to be examined by the courtbefore granting leave to such a bill of review is whether the alleged evIdence was;Dot,d,iscovered by the party until after publication of the decree, and could not hare,l>e!ln known t9 him, by the use of reasonable diligence. In Dexter v. Arn.old,above Cited, at page312,Story, J.,says: "In regard to new matter, there are s!lveral considerations deserving attention. * * * In the'next place, the new matter must have come to the knowledge of the party silice the period iii which it could have been used in the cause at the original hearing. * * * A qualification of the rule, quite as importaut and Instructive, is that the matter must not only be new, but that it must be such as that the party" by the use of reasonable diligence, could not have known it. for, if there be l!o,ny!aches or netligence in this respect, that destroys the title to the relief. " , ,'. , ' ' . The court qltes ,numerous EnglIsh decIsions to thIs ' (In this case, affidavits from both sides were .received in order to determine whether the matter was newly, discovered or not:) See, to tbe same effect, Story's Eq. PI. (lOth Ed.) § 414, cItiq'g numerOl,uj English and Am!lrican cases. The rule as to diligence Is statlld as follows br 2 Daniell, Ch. PI. p. 1578: "Upon the application [for leave to file a bill of review] the court must be satistied tbat the new .has come to the knowledge of the applicant and his agent fortn.eflrsttimesInce the period at which he could have made use of it in thesuit,alld that it could not, with reasonable diligence, have been discov· ered sooner" " 1 Fost. Fed. Pt. (2d Ed.) § 855, states the rule as follows: "Leave should be obtaIned by a petition praying for leave to tile the bIll, sup)orted by an affidaTit showIng that the .new matter which It is desIred to prove vas not knowll to the petitioner, and could not have been discovered by him with the exercise of due dIligence, in time to prove it before the entry of the Iecree sought to be reviewed." , The reasons for this rule are vigorously stated by Lord Eldon,-Young v. Keighly. 16 Ves., 348, 351, where he says, after stating that the evidence newly offered is very material: "On the other hand. it Is most incumbent on the court to take care that the lame subject shall not be put in the course of repeated litigation, and that, with , view to the termination of the suit, the necessity of using reasonably active diligence in the first instance should be imposed upon parties; and the court
e
WATBON '11. STEVENS.
33
must not, therefore. be ,induced by, any persuasion as to the fact that the defend· ant had originally a demand which he cleai'lycould have sustained to break down rules 'established to prevent general mischief at the expense even of par· ticular injury." , See Bingham v. Dawson, 1 Jac. 243. wMreLord Eldon, in dismissing, apetition for leave to file a supplementary bill in the nature of a bill of review. said: "If it is to be laid down that a party may go on to a decree without looking over the defense. and may then make application of this kind, there will never' be an end to them. It is not a case of a search made, and a miscarr1age in that search. but it does not appear that there was any search at all. " Mr. Chancellor Kent also states the same rule emphatically in Wiser v. Blachly, 2 Jobna.Ch. 488,491; and it is laid down also in numerous decisions of the Sllpreme and circuit courts. It is equally well settled that the alleged newly-discovered evidence must beso material that it would unquestionably lead to a reversal ot the judgment, and that it must not be cumulative. These questions of "diligence" and "materiality" are preliminary questions. which must be settled by some court before leave to file a bill of review is granted. After leave has been once granted, the bill is filed, and the contest proceeds as to the truth and sufficiency of the new evidence. We submit that it Is our undoubted right to be heard on these preliminary questions, and we fully believe that we can show absolute lack of diligence on the part of the de· fendants, if not full knowledge of the "new" facts from the beginning. We desire the opportunity also to tile counter affidavits on this question of diligence. a8 Mr. Justice Story stated was the proper practice. in De:s;ter v. Arnold. above cited. And it seems obvious that this question should be settled before leave to file is granted; it is plainly a preliminary question affecting the right to file the bill at all. Whether. in the case at bar. this investi?;ation of the right of the defendants to file a bill of review should be made by the circuit court of appeals, or by the circuit court, it is not necessary for us to urge; but we submit that, if this appel· late court declines to decide the question, the court clearly should not give the defendant absolute leave to file a bill of review. Its mandate should merely give the lower court power to entertain an application for leave to file,a bill of review, in order tbat we may there have the opportunity of addressing ourselves to the discretion of the court, and showing that this is not a case where a bill of review should be allowed to be filed. As the question of practice is, however, an interesting and novel one to this court. we will say that. upon as thorough an investigation of cases as the time allowed to us has permitted, we believe that the proper practice is that it is the appellate court which should exercise its discretioo in granting the leave. after bearing couoselon both sides on the preliminary questions of diligence and materiality. The various citations which we have, given above from text books and cases as to the rules to be followed in granting or refusing leave to file"make no distinction whatey-er between courts of appeal and courts of the first instance, and it would appear that whichever court is properly applied to for leave to file (in this case, the appellate court) has the consequent duty ot exercising the discretion. The cases of Southard v. Russell, How. 547;U. S. v. Knight's Adm'r. 1 Black. 488; Kingsbury v. Buckner. 134 U. S. 650. 671, 10 Sup. Ct. Rep. 638.--;-where it is said that permission to file a bill of review in a case decided by the supreme court should be given by the supreme court. throw no particular light upon the question ,how the permission is granted. But in the two cases which we have discovered. in which a petition for leave to file a bill of review was filed in the supreme court. that court considered the questions of diligence and materiality, heard arguments on both sides, and rendered opinions denying the motion for leave. It would seem that these cases are direct precedents for this court. Rubber Co. v. Goodyear. 9 Wall. 805; Purcell v. Miner. 4 WalL 521 In the former case the court quotes the rule as to diligence, and then says: "Whether such an application shall be g-ranted or refused, rests in the sound discretion of the court. The requisite leave is never a matter of right." The subject of bills of review is thoroughly considered in the recent case of Kimherly v. Arms, 40 Fed. Rep. 548, 553, where Judge Jackson says: "The court rendering the decree should properly exercise the discretion of granting or withholding leave to the unsuccessful party to file a bill of review to impeach or set it aside, either for error apparent or for new matter. The infllriorcourt should not be called upon to exercise'such discretion or to grant sucb
v.53F.no.1-3
FEDERALRE:PORTKB,
vol. 58.
tespectto the decree of a superior court,over,whosejudgmeht It possesflllri no control or right 6t supervision. " ,'t"" " , ' .: :Itl'll'ouJd seem; therefote;that the appellate court.hould. determine whether lea.ve should be granted after a full consideration of the questions which affect and not :grant the Qpplication as a matter of course, leaving the t;0the lower courtl!! , . . ; ';'. ' We do not:· at this stage £If the case, includo in this brief an argument on the question' of defendan ts'., dillg'ence. because, owing to, tbe strong intimation from thecollrt;at theargnmenk.we do not feel certain that they will determine. this point. If;'howeveri this eOl'lrt, shall decide (as would seem.to be the correctpracthe cases abov8:ciwd) that it will exercise its discretion in grllnting lea'Veitlo.. tile·a bill of review,' then we hereby respectfully ask to be heard or to file a brief as to the showing made by the defendants' affidavits upon thequestioD''ot'diligence... ,to cite the decisionlilofJudp;e Blatchford, Judge W811ac:l1waudothers'onreop1lDiDg patent causes by a'billof review. We:lJelieve that we can show from defendants' affidavits suchan absolute lack of the dillgeniCdTeQJ\1iredal willindnce the court to decline to reopen ·this case. which has beenpendiilg for five enl1lireyears, when the alle.ged facts now broughtforward Iisto.anBlleged "priornse" wete either known by the defendants, or p(jrfectly durinj{theentire If this cour.t.shall entertain the question :of::dUlgellCG:' we' ,alia :ask for leave, under the ·practice sanctioned .1;J}" Mr. Juattft> Story in this 'circuit,to introducllcounter liffidavits, to ,show. absolute want crt't'cUligenceon thepart'of the defendants. This is the only stag.e in the C8$Bwh'en we'can propei'lynbe heard upon this point. deslretb submit that, if. leave be given to the defendants to file a btllof reViiew, it must ,plainly be dependent upon the payment of complainant's costs Uip 1io:this stage ofthel'case.This is not only equitable, but is the established practice when a case is reopened to admit alleged newly-discovered evidence, Jddge Lowell settled' the practice for this eircuit in Henry '1. Stove Co., 5 Ban. & A; 108;111: "The p3tent having been sustained at the first bearing, the have. his eosts to the time when the rehearing was ordered. "
for appellee$. of. the. case, it would seem that the appropriate relief for .. 1 Fost. Fed. Pro § 355, The circuit court cannot. entertain such a bill when the case has been heard and the appellate .court without leave. of the latter court. Southard v'.' Rns.sell.:.:JfH ow. . . . cc.Rses Cited; U. S. V. Knight's Adm'r, 1.B1apk, 489: Kl. .. V.".' 40 ·.l' e.4.. 'Re p. 548,-whe.re the practice is fully dISCUSS.ed by . ..... .. Judge Jnckllot:li·Story, Eq.m. § 419, (see Dote.) '. It is proper, therefore, for this court to grant such leave in this case upon this pe.titl.on... . · . . ar.raye.r for general rel.ie.f wm enable the court to grant any relief appropriate will not be' disputed. Id; § 40. The or.' the respondents to strike. petition and affidavits from the tllesoughtnqt to be granted....;.. . .' (1) 'Bec'BusB :petition e'an only be taken froth the tiles for irregularities in the Woody. Griffith, 1 Mer. 85; 1 Fost. Fed. Pl'. § 352,middle p. 667. The regularity of'. the petition is not questioned on this ground. If ill granted under the petitioJ'l; the petition ought not 10 be stricken frpID the1iles. ... . .. ' . . . . .... It is that the.plItitioners are entitled to such action bY' this court as 'rill preserve their rights to proceed by way of a bill of review in the circuit «;l0urt, and t'hat tlieir petition and not to be taken from the files.
Before CO;LT.andP1JTNAM, Circuit Judges, and ALDlUCn, Dis· trict .:fudge: ,PEB CURIAM. Ofd.ered, that whereas, it appears fro#! the suggestion of the counsel ,for the appellees made in open .court,and accompanied with a verified petition andaflidavits, that the appellees conceive tha.tthey willh:ave just cause for application for leave to file a bill of review and to :proceed with such bill; this court reserves to
35 the such application, an\lproceed thereon and ott such bill of review in the circuit court as the circuit. court may determine; and this prder shall forma part of the mandate in this cause, which shall issue forthwith. HARPER v. HARPER et al. Oircuit Oourt of Appeals, Third Circuit. December 5, 1892.
A bill was filed in the federal circuit COllrt in New Jersey for the cancellation or reformation of an agreement allep;ed to have been fraudulently procured. Complainant set forth that, desiring to constitute his divorced wife his agent for the management of his property, and to make certain provisions for her support. but with no Intention of thereby recognizing any existing marital rights.. but for the sake of conciliation, he requested his counsel to draw an agreement containing such provisions, but. on the contrary. such agreement was fraudulently so written that it constituted in law a separation agreement, which recognized the claims of his divorced wife. and invested her with the power to sign deeds as SUCh. To this bill defendant pleaded that a bill had been filed in the chancery court of New Jersey to restrain complainant from in violation of such agreement. apd for an accounting, etc.; collecting that complalOant answered. admitted the execution of the agreement, but averred that defendant hildfailed to keep up repairs, so that the rents had fallen off; and that in consequence he was unable to pay the annuity provided. for;. that complainant also filed a cross bill, whJch defendants answered ; that a final decree was upon the issues raised,dismissing the cross bill and sustaining the agreement, Held, that the decree of the New Jersey court was conclusive of the validity of"the agreement; for plaintiff was then in possession of all the facts, and might have litigated them in that suit.
JUDICATA-QUESTIONS
MIGHT HAVE BEEN LITIGATED.
Appeal from the Circuit Court of the United States for the District of New Jersey. . In EquitY.' Bill by John Harper against Ellen Harper and Gilbert Collins for the cancellation or reformation of an agreement alleged to have been fraudulently procured. Bill dismissed. Plaintiff brings error. Afiirmed. . John A. Dennin, for appellant. Charles L. Corbin, for appellees. Before ACHESON and DALLAS, Circuit Judges, and BUFFINGTON, District Judge. BUFFINGTON, District Judge. This is an appeal by John Harper from a decree of the circuit court of the district of New Jersey, dismissing a bill filed by him against Ellen Harper and Gilbert Collins. In his bill Harper alleged that in 1882 he had been, by a decree of a Dakota court, divorced from his wife, Ellen Harper. That thereafter he tried to convey his real estate in New Jersey, but was prevented by her setting up a claim of dower thereto. That on consultation with Gilbert Collins, who had been his legal adviser, he was told she had no valid claim, but was advised to make an agreement with her which would constitute her his agent for the management of his realty, but would in no way recognize a subsisting relationship of husband and wife between them; that this would end all disputes. That, relyingori Collins' counsel, he consented to make an agreement