## Facts

- Thomas & Betts Co. sued Electrical Fittings Corp. in equity for patent infringement.
- The district court held patent claim 1 valid but not infringed and held claim 2 invalid.
- Despite dismissing the bill for noninfringement, the district court’s decree expressly adjudged claim 1 “valid.”
- The patentees did not appeal and later disclaimed claim 2 in the Patent Office.
- Defendants appealed only the portion of the decree adjudicating claim 1 valid.
- The Second Circuit dismissed the appeal, reasoning defendants received complete relief because the suit was dismissed and the validity statement would not bind them in later litigation.
- The Supreme Court granted certiorari to resolve whether such an appeal may be heard to correct the decree.

## Issues

1. Whether a defendant who prevails on noninfringement may appeal an adverse portion of the decree that purports to adjudge the patent claim valid.
2. Whether the court of appeals has jurisdiction to entertain such an appeal for the limited purpose of reforming the decree to remove the unnecessary validity adjudication.

## Decision

- The Supreme Court reversed the Second Circuit’s dismissal of the appeal.
- The Court held that a defendant is entitled to appeal from so much of a noninfringement decree as purports to adjudge the patent valid.
- The Court ruled the court of appeals had jurisdiction to entertain the appeal, not to decide validity on the merits, but to direct reformation of the decree by eliminating the validity adjudication.
- The case was remanded with instructions to entertain the appeal and order the district court to reform its decree accordingly.

## Legal Principles

- A party generally may not appeal from a judgment in its favor merely to challenge erroneous findings unnecessary to support the decree.
- When the operative decree itself contains an adverse adjudication on a litigated issue (even if immaterial to the dismissal), that portion may be appealable to prevent an improper formal adjudication from remaining in the judgment.
- Appellate jurisdiction permits review sufficient to correct the form and scope of a decree by removing surplus adjudications not necessary to the disposition.

## Conclusion

A defendant who wins dismissal for noninfringement may still appeal an embedded decree statement that adjudges the patent claim valid, and the appellate court may hear the appeal to reform the decree by striking the unnecessary validity adjudication.


Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241 (1939)