THE POSSIBILITIES OF DISCOVERY IN PATENT LITIGATION: SOME RECENT JUDICIAL DEVELOPMENTS. BY CHARLES E. TOWNSEND, OF SAN FRANCISCO, CAL. With the advent of the new equity rules, supplemented, perhaps, by an awakened legal conscience, fresh reasons are presented why we should inquire into the manner and means by which time, expense and annoyance to the courts, the Bar and the public may be saved or avoided in making proofs, and otherwise maturing cases for trial on their merits. We must all be appreciative and in more or less degree deserving of the varied criticisms directed impartially at Bench and Bar for the delays and expense incident to litigation, and especially patent litigation. One of the chief deterents to the bringing of rightful actions, and, conversely, the chief reliance of wilful infringers, is the practical knowledge that a patent law suit is too often a rich man's prerogative. Yet, if the Bar as a unit, would but realize that patent suits, so we have been told by a distinguished gentleman at a former meeting of this Association (A. J. Walters, K. C., September 2, 1913), have increased in England in direct proportion to the lessening of time and expense in trying cases, there might be an automatic ending of much that has given rise to criticism on the part of the public here. Critics and reformers have sought, as a rule, for improvement in legislation, whereas the possibilities and potentialities of the laws now in force are largely sufficient for alleviation of such onerous conditions as may present themselves in practice. As you all know, discovery has long been an invaluable aid in the administration of equitable remedies; its functions being often 1 Supposedly we may speak of an awakened legal conscience, as well as of an awakened civic, or public, or national conscience. A "legal" conscience portends a recognition at least of a dormant fact rather than the invention of a new fiction. available in aid of actions-at-law, so that the new equity rules have not so much introduced innovations as to have offered a new starting point in regard to things that have long been recognized ought to be done, but to do which had grown more and more difficult as they became shrouded in precedent linked to the past. Whatever tends to draw forth from one party to an action in aid of the other party's cause or defense, prior to trial, may be considered in the nature of a "discovery," irrespective of the name or the particular means by which the end is attained: 1. Whether it be by the old bill of discovery in aid of an action at law Colgate vs. Compagnie Francaise Du Telegraphe De Paris and N. Y. 23 Fed. 82. 2. Or interrogatories in a bill or cross bill under the old chancery practice. 3. Or by motion to make a complaint more definite and certain in a law action so as to particularize the infringement. Fischer vs. Auto. Supply Mfg. Co. Inc., 199 Fed. 191. 4. Or by motion to make a bill or answer, or both, more definite and certain under new Equity Rules 25 and 30, so as to require a plaintiff or defendant, or both, to set forth respectively the essential novelty of the patent sued on, or essential aptness of the prior art set out in an answer under Section 4920. Coulston et al. vs. H. Franke Steel Range Co., Inc., 221 Fed. 669. 5. Or by a proceeding for discovery under new Equity Rule 58. Bronk vs. Chas. H. Scott Co., 211 Fed. 338. P. M. Co. vs. Ajax Rail Anchor Co., 216 Fed. 634. Blast Furnace Appliances Co. vs. Worth Bros. Co., 221 6. Or where one party is left in doubt as to the position of the other concerning the latter's theory of the case, by a motion of such party to have the depositions of the experts of both parties taken under new Equity Rule 48; assuming the validity of such a course, regarding which some doubt is entertained by text writers and the Bar. With the exception of proceedings under new Equity Rule 48 these are all more or less in the nature of demands for additional evidence addressed to the conscience of one or the other of the parties, and the courts have frequently said that litigants ought to have their consciences searched, for by so doing time is saved, expense is avoided, and the court is able the more readily to reach and deal with the very thing in dispute. It is obviously desirable to ascertain the merits of a case at its outset, so far as may be practicable when this can be done. with the formalities and safeguards of regular procedure, rather than to await the result of an elaborate trial; the public, as well as the immediate litigants sharing in this gain. These considerations are not limited to equity suits but are shared by actionsat-law. Therefore, in considering the subject of "discovery" it seems proper to treat it in this broader aspect, rather than to limit it to interrogatories. BILLS OF DISCOVERY. The want of power in the common law courts to compel a disclosure of the truth, either through the oath of the party to the suit, or by lack of process of its own to compel the production of written evidence in the possession of an adverse party, brought forth that invention of equity known as a bill of discovery, whereby the right to demand information known only to the defendant in aid of the plaintiff's suit was permitted. By a bill of discovery a plaintiff could interrogate a defendant, but a defendant could not interrogate a plaintiff in the same suit except on the filing of a cross bill. Bills of discovery, in patent litigation at least, are rendered practically obsolete, since there is no apparent excuse for their invocation in aid of an action at law on a patent. If the plaintiff wants discovery let him go into equity for it in the first place." Since bills of discovery as historical precedents are to play an important part, no doubt in the future interpretation of the new rules it may be worth while to refer briefly to a modern and leading case on this subject. In the case of Colgate vs. Compagnie Francaise Du Telegraphe De Paris and N. Y., 23 Fed. 82, Judge Wallace clearly sets out the functions and limitations of such bills. There defendant was a cable company operating a cable telegraph between France and the United States. The alleged infringing cable, DISCOVERY IN LAW ACTIONS. In focusing attention on the new equity rules and awaiting the court's interpretation of them, supported and assisted by the Bar, we are not to lose sight of the fact that patent causes are still triable as law actions; and as cases are still liable and certain to be tried as actions at law in the future, there are two recent decisions bearing on the subject of discovery that command the attention of the patent Bar and of the courts having jury cases involving patent matters coming before them. I refer to the case of Carpenter vs. Winn, 221 U. S. 533, 55 L. Ed. 842, under Sec. 724 U. S. Rev. Stat., treating on the proposition of discovery of documents and to the case of Fischer vs. Auto. Supply Mfg. Co. Inc., 199 Fed. 191, relating to discovery of facts by a defendant on the question of infringement. Section 724 U. S. Revised Statutes.-Until the decision of the Supreme Court in 1910 in Carpenter vs. Winn, 221 U. S. 844, 55 L Ed., construing this section, parties in patent actions had frequently invoked it in aid of discovering documents and other papers in preparation for trial. Section 724 is substantially the 15th Section of the Judiciary Act of 1789 and is as follows: including the mode and materials of its construction, were in the complete control of the defendant and while the plaintiff in the action at law had a reasonable suspicion evidently of infringement, yet when the answer came in denying infringement, the plaintiff became unable to prosecute its action without full discovery of the method of insulation of these lines of cable telegraph, for the reason that the lines were under water and not open to plaintiff's inspection. Thereupon the plaintiff filed a bill of discovery in aid of its action at law. The defendant filed a demurrer to the bill claiming, first, that the defendant as a corporation could not be compelled to make a discovery; and, second, that the discovery should be refused in view of Section 724 of the Rev. Stat. The first ground of demurrer was overruled on the ground that while a corporation cannot be compelled to answer under oath to a bill in equity (and for that reason it was usually customary for the officers of the corporation to be made parties to the bill, and to require them to answer the interrogatories), yet that did not excuse the corporation from answering and making diligent examination so as to give in the answer all the information derived from such examination. "In the trial of actions at law, the courts of the United States may, on motion and due notice thereof, require the parties to produce books or writings in their possession or power which contain evidence pertinent to the issue, in cases and under circumstances where they might be compelled to produce the same by the ordinary rules of proceeding in chancery. If a plaintiff fails to comply with such order, the court may, on motion, give the like judgment for the defendant as in cases of nonsuit; and if a defendant fails to comply with such order, the court may, on motion, give judgment against him by default." The purpose of this provision is to provide a substitute for the bill of discovery in aid of a legal action. As Justice Lurton pointed out, the penalty for failing to comply with such an order as the Statute provided is exceedingly stringent, that of a nonsuit or a judgment by default." Justice Lurton in the Carpenter case pointed out that for more than a century trial courts had disagreed as to whether, under the enactment of Section 724, the procedure was limited to a requirement that the books, documents and.writings be produced at the trial, or, in the discretion of the court, before the trial, for such investigation and examination as the party obtaining the order might desire. The learned justice reviewed the authorities pro and con and decided that the words "in the trial" meant at the trial, and not before the trial, or in preparation for trial; one reason for giving a strict construction being that the statute imposed severe penalties on a party's refusing to comply with the demand to produce: i. e., An allegation of ignorance without excuse would infer a disposition to defeat and obstruct the course of justice. The second demurrer was overruled by reason that Section 724 of the Rev. Stat. did not apply. Measured by our present method of procedure in equity, the cumbersomeness of such a double litigation is manifest. In this particular it is interesting to compare the act with the provision of new Equity Rule 58, paragraph 5, which provides that: The court or judge, upon motion and reasonable notice, may make all such orders as may be appropriate to enforce answers to interrogatories or to effect the inspection or production of documents in the possession of either party and containing evidence material to the cause of action or defense of his adversary. Any party failing or refusing to comply with such an order shall be liable to attachment, and shall also be liable, if a plaintiff, to have his bill dismissed, and, if a defendant, to have his answer stricken out and be placed in the same situation as if he had failed to answer.” |