On Petition for Rehearing.
Appellant has filed a petition for rehearing which raises no new questions and which we therefore deny.
However, if there was ever any doubt about it, that petition makes his position, as to Patent No. 2,000,064, indubitably clear. For, referring to the statement which we previously quoted from his original brief "[Appellant does not challenge that part of the judgment which holds the claims not infringed"], he now states that "perhaps it would have been more accurate," if he had said that "appellant waives the question of infringement" or "concedes there is no infringement." He adds that it was his purpose "to waive the question of infringement," and on this appeal merely to assert error as to the judgment of invalidity, because his attorneys, "in view of what occurred at the trial, came to the deliberate conclusion that that patent was not infringed." There can, then, be no question that not by inadvertence but deliberately, with commendable candor and no effort to evade, appellant takes this position: Although in the trial court he had thought that he had a controversy with appellee, whom he then regarded as an infringer, he concedes that there is no longer any such controversy because the trial in the court below convinced him that appellee has neither infringed nor threatened to do so, with the consequence that appellee is now an utter stranger to him litigiously; nevertheless, although there is no real controversy before this court, and he is now seeking no relief of any kind against appellee or anyone else, he asks this court to hold that his patent is valid. It would be difficult to imagine a clearer instance of a request for a purely advisory opinion. Such an opinion the Supreme Court, with unswerving consistency, has held no federal "constitutional" court - because of Article III, Section 2 - has the constitutional power to give. In such a suit we cannot pass on the "merits" for, where there is no "justiciable" dispute, there are no "merits." There is merely an unreal entity resembling that disembodied smile which Lewis Carroll immortalized.*fn1 Many Supreme Court decisions teach us that appellate jurisdiction, when no justiciable dispute exists on appeal, cannot be rested upon the recollection that such a dispute previously existed when the case was in the trial court.*fn2 There is nothing "technical" - unless all decisions in conformity with constitutional restraints on the powers of the federal judiciary are "technical" - in our conclusion that we must dismiss this appeal for want of jurisdiction, and thereby leave standing the judgment in favor of appellee who had been engaged in what was a real controversy in the court which entered that judgment.
Such an appeal is, of course, entirely different from one in which a real controversy still exists when the case comes before us. For then (as we said in detail in our original opinion) we may affirm a judgment adverse to a patentee either by holding (a) that the patent is invalid, or (b) that there is no past or threatened infringement, or (c) that the patent is invalid and also that there is no infringement. The affirmance of a judgment against a patentee, or the reversal of a judgment in favor of a patentee, may properly be based upon a conclusion as to either one or both of the two major elements - validity and infringement - involved in a patent suit; although, as we have said, it may often be desirable to rest a decision adverse to a patentee on invalidity, when the evidence so warrants, a court is not obliged to do so. The exercise of such a "discretion" as to the grounds of decision in patent suits - when a real controversy is before the court - gives rise to no novelties or complexities in procedure; similar discretion in the choice of the bases of decisions is exercised by all courts every day in other types of litigation.
CLARK, Circuit Judge (concurring):
I concur in the order amending the opinion. Certainly my brethren should be allowed to draw such sustenance as they can for their admittedly technical ruling*fn3 from the plaintiff's persistence in sticking by the legal theory of the case which he developed after the record was made up in preference to returning to the at least equally available theory upon which the case was tried below. Possibly a change in strategy might have been the shrewder approach; at any rate, we are now spared the pain of deciding whether a petition for rehearing can restore to us that jurisdiction of which a party's brief or oral argument can rob us. Recent decisions of this court suggest that a matter which should lie easily in the court's discretion, see 11 Geo.Wash.L.Rev. 121, is now in a rather hopeless procedural mess. Compare Richard Irvin & Co. v. Westinghouse Air Brake Co., 2 Cir., 121 F.2d 429 (decision below reversed in part, since invalidity is moot upon a finding of non-infringement); Hazeltine Corp., v. Emerson Television-Radio, Inc., 2 Cir., 129 F.2d 580 (decision below affirmed on one, or possibly two, of the several grounds upon which it was entered); Aero Spark Plug Co. v. B.G. Corp., 2 Cir., 130 F.2d 290 (decision below affirmed for non-infringement only, against the objections of Judge Frank); K. Kaufmann & Co. v. Leitman, 2 Cir., 131 F.2d 308 (decision below, ...