Bendix Aviation Corp. v. Glass ( 1952 )

MARIS, Circuit Judge.

This is an appeal by the plaintiff from an oVder of the District Court for the Eastern District of Pennsylvania dismissing without prejudice the plaintiff’s complaint which sought specific performance of certain acts which it alleged the defendant had agreed to perform. The order did not dispose of, but left pending for future determination, the defendant’s counterclaim for damages arising from the same transactions. The order was entered upon the express determination by the district court that there was no just reason for delay and upon the express direction of the court for the entry of judgment thereon.

We are faced at the outset with the jurisdictional question whether the order here sought to be reviewed is a “final decision” which is appealable to this court under Sec. 1291 of Title 28, United States Code.¹ The plaintiff points out that the order was entered as a final judgment in strict accordance with the provisions of Civil Procedure Rule 54(b), 28 U.S.C.,² and it argues that by virtue of the operation of that rule it must be regarded as a “final decision” within the scope of Sec. 1291.

As we have said the action in the district court involves multiple claims for relief, namely, a claim for equitable relief by the plaintiff in the complaint and a claim for damages by the defendant in the counterclaim. It is thus the type of action to which Rule 54(b) is directed. The order here appealed from was entered as a final judgment in strict accordance with that rule. If, therefore, the rule validly authorizes the entry of a “final decision” as that phrase is understood in Sec. 1291 the order here in question is appealable and this court has jurisdiction to hear and determine it. Our jurisdiction accordingly turns on the scope and validity of Rule 54(b).

Rule 54(b) in its present form was adopted December 27, 1946, effective March 19, 1948. It superseded Rule 54(b) as originally adopted which had authorized the entry of judgment on one of the claims in an action involving multiple claims when and only when the issues material to that claim and all counterclaims arising out of the same transaction or occurrence had been ■determined. The application in practice of this single transaction standard resulted in a good deal of confusion and the consequent uncertainty as to the appealable finality of judgments entered in multiple claims actions made necessary the taking of many precautionary appeals in doubtful cases. It was largely to eliminate this uncertainty and confusion that the amended rule was proposed and adopted.³

As the Supreme Court’s Advisory Committee pointed out in its note to the Court on. the amended rule, the latter was the result of the Committee’s conclusion that the retention of the older federal rule which prohibited piecemeal disposal of litigation and permitted appeals only from final judgments was desirable and needed only the vesting in the district courts of a discretionary power to afford a remedy in the infrequent harsh case to provide a simple, definite, workable rule.⁴ We read that rule, as embodied in amended Rule 54(b), to be that in a multiple claims case the judgment which finally adjudicates all the claims is the only judgment having finality unless the district court in the exercise of its discretion expressly determines that there is no just reason for delay with respect to the entry of a final judgment upon a particular claim in the action and accordingly expressly directs the entry of a final judgment adjudicating that claim. In such case the rule says that “the court may direct the entry of a final judgment.” This is language of grant not of restriction and it requires that the judgment thus entered on a single claim is to be regarded as just as final, so far as further revision by the district court is concerned, as though the claim thus adjudicated were the sole claim for relief embodied in a wholly independent action. For when such a judgment has been entered it may at once be enforced and executed, unless enforcement is stayed by the court under Rule 62(h).

If Rule 54(b) may validly be given this effect, which we read its language to require, it is conclusive in support of the jurisdiction of this court to entertain the present appeal. For such a final judgment would be a “final decision” of the district court within the meaning of Sec. 1291 and thus appealable. It is contended by the defendant, however, that Rule 54(b) cannot be given this effect but must be construed as merely having the purely negative effect of making non final and, therefore, nonappealable certain types of judgments in multiple claims cases which would have been regarded as final and, therefore, appealable under the old practice. The case of Flegenheimer v. General Mills, 2 Cir., 1951,191 F.2d 237, is cited in support of this contention.⁵ 6With all due respect to our brethren of the Second Circuit who joined in that opinion we cannot agree that the effect of Rule 54(b) must be thus narrowed.

The theses of those who support the decision in the Flegenheimer case are two. First they say that the language of Rule 54(b) itself requires that it be limited to the negative effect of making interlocutory and nonappealable judgments on single claims in multiple claims suits which do not embody the formula of the rule. We have already stated that we cannot so read the rule. Then they say that if read more broadly the rule would be invalid. Pointing out that a judgment which determined less than all of the claims arising out of the same transaction in a multiple claims suit would not have been appealable as a “final decision” prior to the Federal Rules of Civil Procedure, they say that to give Rule 54(b) the effect of making such a judgment final would be to extend the jurisdiction of the courts of appeals to judgments not previously appealable and this would render the rule invalid as beyond the rule making power of the Supreme Court under the Enabling Act of June 19, 1934, c. 651, 48 Stat. 1064.⁶

It is unquestionably true that neither the Act of 1934 nor its successor, Sec. 2072 of Title 28, authorized the Supreme Court by the Federal Rules of Civil Procedure adopted under those statutes to alter the jurisdiction of the district courts or of the courts of appeals.⁷ We also assume that a judgment which, as here, adjudicated the plaintiff’s claim while leaving unadjudicated the defendant’s counterclaim arising out of the same transactions would not have been regarded as. a final appealable judgment prior to the amendment of Rule 54(b).⁸ But it does not follow that the jurisdiction given to this court by Sec. 1291 has been altered because Rule 54(b) has made it possible for the district court to make final, and, therefore, appealable, a type of judgment which under the procedural rules previously in force was always subject to later revision in the district court and was, therefore, regarded as not appealable because it was interlocutory.

We have seen that Sec. 1291 makes all “final decisions” appealable. While the phrase “final decisions” is not defined in the statute it obviously refers to steps in the course of litigation in the district courts, steps which rise to the dignity of “decisions” and which are “final”. What is an appealable decision within the meaning of Sec. 1291 has been the subject of much judicial discussion which we need not here review. Suffice it to say that there is involved the idea of a definitive judgment, order or decree determining something more than a mere procedural incident in a law suit and that a judgment definitively adjudicating a claim for relief in a civil action clearly comes within, it. Whether a decision is final within the meaning of Sec. 1291 has also been the subject of a host of cases. It is settled that finality involves the •termination of the litigation so that nothing remains but to execute the judgment or decree in question.⁹ But this does not necessarily mean the termination of the entire law suit. For in the course of a judicial proceeding there may be one or more final decisions on particular phases of the litigation, reserving other matters for future determination.¹⁰ A court of appeals in passing upon the finality of a district court judgment for purposes of appeal -must necessarily look to the proceedings in the district court. And it must appraise the nature of those proceedings in the light of the procedural rules of the district court which give them meaning and effect. The jurisdiction conferred upon the courts of appeals by Sec. 1291 depends for its exercise upon the production of final judgments by the district courts in accordance with their procedural rules. When these rules have changed, the impact of Sec. 1291 has changed with them ¹¹ In this sense many of the procedural rules of the district courts unquestionably affect the jurisdiction of the courts of appeals under Sec. 1291.

Rule 54(b) is such a procedural rule.¹² As we have seen, its purpose is to provide an objective and mechanical way for determining when a judgment adjudicating a single claim for relief in a multiple claims suit is, and when it is not, to be regarded as final and not subject thereafter to revision by the district court. By providing that judgments stamped with its hallmark shall be final and not subj ect to revision and that those without the mark shall he interlocutory and subject to revision the rule indirectly and incidentally affects the jurisdiction of the courts of appeals by regulating the production of final decisions upon which the jurisdictional grant of Sec. 1291 may operate. The rule thus undoubtedly affects the amount of grist available from time to time for the appellate mill. But so do a number of the other Civil Procedure Rules which have been upheld as appropriate district court procedure. These include Rule 73(a) which shortened the statutory time for taking appeals and thereby deprived certain litigants of their right of appeal¹³ and Rule 74 which abolished the principle previously observed by the Supreme Court¹⁴ that it had no jurisdiction of an appeal by one party from a joint judgment against him and another party in the absence of summoms and severance.¹⁵

Moreover it is difficult to see why a rule permitting the entry of a final judgment at an early stage in a multiple claims action is any less procedural than one permitting the district court to delay the entry of such a judgment until the final stage. For the effect of Rule 54(b) upon a judgment in a multiple claims suit which would have been final and appealable before the adoption of the rule is to make it interlocutory and nonappealable merely by the failure to employ in its entry the formula prescribed by the rule. This negative operation of the rule certainly affects appellate jurisdiction just as much as its positive application hut neither the court in the Flegenheimer case nor the defendant here see any impropriety in this application of the rule. Nor are they concerned by the opportunity which the rule thus gives to the district court to postpone the exercise of appellate jurisdiction although they appear to regard it as a revolutionary idea to permit the court through the positive operation of the rule to accelerate the exercise of such jurisdiction.

We are not disquieted by either aspect of the rule. Surely a district judge is in an excellent position to determine from the standpoint of justice to the litigants the best time at which to terminate by final judgment the litigation with respect to a single claim in a multiple claims suit and thus to open the way to immediate appellate review and execution of the judgment.¹⁶ And we do not think that his action in thus timing his final decision involves the -determination of the jurisdiction of the court of appeals to any greater extent than would his action in fixing the date of trial or of .the filing of his opinion or of the entry of judgment thereon. Nor do we doubt that Rule 54(b) is within the rule-making power of the Supreme Court for, as we have demonstrated, it really regulates district court procedure rather than appellate jurisdiction and its effect on the latter is but incidental and indirect.¹⁷ The rule has the force of a statute.¹⁸ We conclude that it operates to make the judgment here sought to he reviewed a final decision which is appealable under Sec. 1291 of Title 28.¹⁹ This conclusion makes it unnecessary to consider the plaintiff’s contention that the judgment is appealable under Sec. 1292 of Title 28 because the dismissal of the complaint involved the refusal of the injunction prayed for therein. We accordingly come to the merits of the appeal.

The essential facts are these. The plaintiff instituted an action of an equitable character concerning rights in an invention, alleging that the device in suit was invented by the defendant while employed by the plaintiff under circumstances which caused the plaintiff to be entitled -to exclusive property in the invention. It is alleged further that the defendant disclosed and assigned the original invention to the plaintiff and that a patent was duly applied for by the plaintiff. Subsequently the plaintiff desired to protect a certain embodiment of the disclosures of said invention by a divisional patent application as required by the rules of the Patent Office but the defendant refused to execute such application and other supporting papers as were necessary. The complaint prayed that the defendant be required to execute these documents and be restrained from dealing in any way with the invention as his own property. The answer denied any obligation to perform the demanded acts without compensation but stated willingness to do so upon payment of fair compensation. In a counterclaim the defendant asserted that the assignment of his invention to the plaintiff was made under circumstances entitling him to compensation and demanded such compensation.

Thereafter the defendant moved to dismiss the original claim for equitable relief showing that since the institution of the suit he had executed and filed a divisional patent application in the form desired by the plaintiff covering the matter complained of, and that a divisional patent had issued and title thereto had become vested in the plaintiff pursuant to an assignment which the defendant had previously made. The plaintiff opposed this motion, asserting among other things that the defendant’s acts were qualified by a continuing assertion of both an interest in the invention and a right to compensation. Thereupon the defendant filed a formal written statement “that he will not now or at any time seek of this or any other court any relief in respect to any matters of fact or law set forth in the Counterclaim and Answer to1 the Complaint or m respect to patents Nos. 2,488,771 and 2,535,914 [the patents in controversy] or the inventions claimed therein, other than money compensation or damages.” After hearing on the motion, the district court concluded that the defendant had performed all acts as to which specific performance could have been ordered under the complaint and, inferentially at least, that the only issues remaining between the parties could be decided on subsequent adjudication of the counterclaim. Thereupon the court entered its order dismissing the complaint without prejudice, from which order the present appeal has been taken. We think that the order was rightly entered and should be affirmed.

The allegations of the complaint were directed solely to the refusal of the defendant to sign the papers required to prosecute the divisional patent application which was made necessary by the rules of the Patent Office. These allegations supported the plaintiff’s prayer for specific perform-anee of the defendant’s obligation to sign those papers. However, after it appeared that the defendant had signed them and that the divisional patent had been issued in the plaintiff’s name the need of the plaintiff for the specific performance which it had sought no longer existed. The plaintiff urges that the performance was not adequate since it was given by the defendant under a continuing claim of a right to compensation from the plaintiff. But this claim is the subject of the defendant’s counterclaim for damages and does not involve an attack upon the plaintiff’s title to the patents. It may, therefore, be fully adjudicated when the counterclaim is heard and decided.

The plaintiff also asserts its continuing need for the injunctive relief prayed for and, under its prayer for general relief, for an adjudication of its title to the patents. But there are no allegations whatever in the complaint that the defendant has encumbered, licensed, disposed of, or operated under the invention or threatened to do so or that he claims any title thereto, which would support these prayers for relief. Moreover by his solemn statement filed in the district court and upon which the court in part relied in dismissing the complaint the defendant would be estopped from asserting any right to or interest in the invention adverse to the plaintiff, except for money compensation or damages. That claim, as we have said, is the subject of his counterclaim and the controversy between the parties with respect to it may be determined in that pending proceeding. Hence nothing remains to be adjudicated under the complaint and it was, therefore, properly dismissed without prejudice.

The order of the district court will be affirmed.

1 . "§ 1291. The courts of appeals shall have jurisdiction of appeals from all final decisions of the district courts of the United States * * * except where a direct review may be had in the Supreme Oourt.”

2 . “(b) Judgment Upon Multiple Claims. When more than one claim for relief is presented in an action, whether as a claim, counterclaim, cross-claim, or third-party claim, the court may direct the entry of a final judgment upon one or more but less than all of the claims only upon an express determination that there is no just reason for delay and upon an ■express direction for the entry of judgment. In the absence of such determination and direction, any order or other form of decision, however designated, which adjudicates less than all the claims shall not terminate the action as to any of the claims, and the order or other form of decision is subject to revision at any time before the entry of judgment adjudicating all the claims.”

3 . Dickinson v. Petroleum Conversion Corp., 1950, 338 U.S. 507, 512, 70 S.Ct. 322, 94 L.Ed. 299; Pabellon v. Grace Line, 2 Cir., 1951, 191 F.2d 169, 175.

4 . Notes of Advisory Committee on Amendments to Rules, 28 U.S.C.A, Federal Rules of Civil Procedure, following Rule 54.

5 . But see Pabellon v. Grace Line, 2 Cir., 1951, 191 F.2d 169, certiorari denied Coston Supply Co. v. Pabellon, 342 U.S. 893, 72 S.Ct. 201, and Lopinsky v. Hertz Drive-Ur-Self Systems, 2 Cir., 1951, 194 F.2d 422, to the contrary.

6 . Now incorporated in 28 U.S.C. § 2072.

7 . Sibbach v. Wilson & Co., 1941, 312 U.S. 1, 10, 61 S.Ct. 422, 85 L.Ed. 479.

8 . See General Elec. Co. v. Marvel Rare Metals Co., 1932, 287 U.S. 430, 432, 53 S.Ct. 202, 77 L.Ed. 408; Winters v. Ethell, 1889, 132 U.S. 207, 210, 10 S.Ct. 56, 33 L.Ed. 339; Audi Vision, Inc., v. B.C.A. Mfg. Co., 2 Cir., 1943, 136 F.2d 621, 147 A.L.R. 574; Petrol Corporation v. Petroleum Heat & Power Co., 2 Cir., 1947, 162 F.2d 327.

9 . Catlin v. United States, 1945, 324 U.S. 229, 233, 65 S.Ct. 631, 89 L.Ed. 911; 28 U.S.C.A. § 1291, Note 102.

10 . Kasishke v. Baker, 10 Cir., 1944, 144 F.2d 384, certiorari denied 325 U.S. 856, 65 S.Ct. 1185, 89 L.Ed. 1976; Beneficial Industrial Loan Corp. v. Smith, 3 Cir., 1948, 170 F.2d 44, 49, affirmed sub nom. Cohen v. Beneficial Loan Corp., 1949, 337 U.S. 541, 69 S.Ct. 1221, 93 L.Ed. 1528.

11 . Compare Reeves v. Beardall, 1942, 316 U.S. 283, 62 S.Ct. 1085, 86 L.Ed. 1478, and Collins v. Metro-Goldwyn Pictures Corporation, 2 Cir., 1939, 106 F.2d 83, with Sheppy v. Stevens, 2 Cir., 1912, 200 F. 946.

12 . Winsor v. Daumit, 7 Cir., 1950, 179 F.2d 475, 477 — 478.

13 . Ray v. Morris, 7 Cir., 1948, 170 F.2d 498; Hart v. Knox County, Tenn., 6 Cir., 1948, 171 F.2d 45; Smith v. Lehigh Valley R. Co., 2 Cir., 1949, 174 F.2d 592.

14 . Hartford Accident & Indemnity Co. v. Bunn, 1932, 285 U.S. 169, 181, 52 S.Ct 354, 76 L.Ed. 685.

15 . Schaffer v. Pennsylvania R. Co., 7 Cir., 1939, 101 F.2d 369, 372.

16 . Moore’s Commentary on the U. S. Judicial Code, 1949, p. 517: “Flexibility is introduced by giving the district court, which has first band information as to the litigation and its progress, to determine that when one branch of it has been adjudicated it is or is not then ripe for appellate review.”

17 . Compare Mississippi Pub. Corp. v. Murphree, 1946, 326 U.S. 438, 445, 66 S.Ct. 242, 240, 90 L.Ed. 185: “Congress’ prohibition of any alteration of substantive rights of litigants was obviously not addressed to such incidental effects as necessarily attend the adoption of the prescribed new rules of procedure lie * * ”

And see the excellent discussion of the background of Rule 54(b) and the history of the power of the Supreme Court to promulgate rules affecting appellate procedure contained in the concurring opinion of Judge Clark in Lopinsky v. Hertz Drive-Ur-Self Systems, 2 Cir., 1951, 194 F.2d 422.

18 . Winsor v. Daumit, 7 Cir., 1950, 179 F.2d 475, 477.

§ 2072 of Title 28 U.S.C., effective Sept. 1, 1948, which currently authorizes the Supreme Court to make rules of civil procedure, provides: “Nothing in this title anything therein to the contrary notwithstanding, shall in any way limit, supersede, or repeal any such rules heretofore prescribed by the Supreme Court.”

19 . We do not think that this result is affected by Civil Procedure Rule 82 upon which the court appears to have relied in the Flegenheimer case. Eor that rule merely directs that the “rules shall not be construed to extend or limit the jurisdiction of the United States district courts”. It does not even refer to the jurisdiction of the courts of appeals.