Hanks Dental Association v. International Tooth Crown Company

• Decision Date: 16 May 1904
• Docket Number: No. 253,253
• Citation: 24 S.Ct. 700,194 U.S. 303,48 L.Ed. 989
• Parties: HANKS DENTAL ASSOCIATION v. INTERNATIONAL TOOTH CROWN COMPANY
• Court: U.S. Supreme Court

194 U.S. 303

24 S.Ct. 700

48 L.Ed. 989

HANKS DENTAL ASSOCIATION

v INTERNATIONAL TOOTH CROWN COMPANY.

No. 253.

Argued and submitted April 26, 1904.

Decided May 16, 1904.

Messrs.

The certificate in this case is as follows:

'This cause comes here upon a writ of error for the review of the judgment of the circuit court for the southern district of New York, entered upon the verdict of a jury in favor of the defendant in error, The International Tooth Crown Company, sustaining the validity of a patent, and awarding damages for infringement. Upon examination of the record it appears that the sole evidence of infringement was found in the deposition of the president of the Hanks Dental Association, the plaintiff in error, taken pursuant to an order of the circuit court under §§ 870 et seq. of the Code of Civil Procedure of the state of New York, the defendant in error contending the examination of a party before trial, if permitted by the law of the state, is authorized by act of Congress of March 9, 1892. 27 Stat. at L. 7, chap. 14 (U. S. Comp. Stat. 1901, p. 664).

'The taking of the deposition was objected to at every stage, and when offered in evidence at the trial it was again duly objected to, and to its reception the plaintiff in error duly excepted.

'Whether this practice is warranted or not is the question upon which we desire the instructions of the Supreme Court.

'Question Certified.

'Upon the facts above set out the question of law concerning which the court desires the instruction of the Supreme Court is:

'Was the order of the circuit court directing the president of the Hanks Dental Association, the defendant in that court, to appear before a master or commissioner appointed pursuant to the provisions of §§ 870 et seq. of the Code of Civil Procedure of the state of New York, valid and authorized under the act of March 9, 1892?'

Philip B. Adams, Charles K. Offield, and Charles C. Linthicum for the Hanks Dental Association.

Mr. Walter D. Edmonds for the International Tooth Crown Company.

Mr. Chief Justice Fuller delivered the opinion of the court:

Section 870 of the Code of Civil procedure of New York provides that 'the deposition of a party to an action pending in a court of record, or of a person who expects to be a party to an action about to be brought, . . . may be taken at his own instance or at the instance of an adverse party or of a coplaintiff or codefendant at any time before the trial, as prescribed in this article.' And succeeding sections set forth how such examinations may be ordered.

In Ex parte Fisk, 113 U. S. 713, 28 L. ed. 1117, 5 Sup. Ct. Rep. 724, decided at October term, 1884, it was held that this statute was in conflict with § 861 of the Revised Statutes of the United States (U. S. Comp. Stat. 1901, p. 661), and not within any of the exceptions to the rule therein prescribed. The sections bearing on the subject were thus summarized by Mr. Justice Miller, who delivered the opinion of the court:

"Sec. 861. [U. S. Comp. Stat. 1901, p. 661]. The mode of proof, in the trial of actions at common law, shall be by oral testimony and examination of witnesses in open court, except as hereinafter provided.'

"Sec. 863 [U. S. Comp. Stat. 1901, p. 661]. The testimony of any witness may be taken in any civil cause depending in a district or circuit court, by deposition de bene esse, when the witness lives at a greater distance from the place of trial than one hundred miles, or is bound on a voyage to sea, or is about to go out of the United States, or out of the district in which the case is to be tried, and to a greater distance than one hundred miles from the place of trial, before the time of trial, or when he is ancient or infirm.' The remainder of this section, and §§ 864 and 865 [U. S. Comp. Stat. 1901, p. 663], are directory as to the officer before whom the deposition may be taken, the notice to the opposite party, and the manner of taking, testifying, and returning the deposition to the court.

"Sec. 866 [U. S. Comp. Stat. 1901, p. 663]. In any case where it is necessary, in order to prevent a failure or delay of justice, any of the courts of the United States may grant a dedimus potestatem to take depositions according to common usage; and any circuit court, upon application to it as a court of equity, may, according to the usages of chancery, direct depositions to be taken in perpetuam rei memoriam, if they relate to any matters that may be cognizable in any court of the United States.'

'§ 867 [U. S. Comp. Stat. 1901, p. 664] authorizes the courts of the United States, in their discretion, and according to the practice in the state courts, to admit evidence so taken; and §§ 868, 869, and 870 [U. S. Comp. Stat. 1901, pp. 664, 665] prescribe the manner of taking such depositions, and of the use of the subpoena duces tecum, and how it may be obtained.'

Mr. Justice Miller then continued: 'No one can examine these provisions for procuring testimony to be used in the courts of the United States, and have any reasonable doubt that, so far as they apply, they were intended to provide a system to govern the practice, in that respect, in those courts. They are, in the first place, too complete, too far-reaching, and too minute to admit of any other conclusion. But we have not only this inference from the character of the legislation, but it is enforced by the express language of the law in providing a defined mode of proof in those courts, and in specifying the only exceptions to that mode which shall be admitted.'

And he further said: 'Its purpose is clear to provide a mode of proof in trials at law, to the exclusion of all other modes of proof.' 'It is not according to common usage to call a party in advance of the trial at law, and to subject him to all the skill of opposing counsel, to extract something which he may then use or not, as it suits his purpose.' 'Every action at law in a court of the United States must be governed by the rule or by the exceptions which the statute provides. There is no place for exceptions made by state statutes. The court is not at liberty to adopt them, or to require a party to conform to them. It has no power to subject a party to such an examination as this.'

Sections 721 and 914 (U. S. Comp. Stat. 1901, pp. 581 and 684) were held inapplicable because the law of the state was inconsistent with the law of Congress. And see Beardsley v. Littell, 14 Blatchf, 102, Fed. Cas. No. 1,185, Blatchford, J.; United States v. Pings, 4 Fed. 714, Choate, J.; Fogg v. Fisk, 22 Blatchf. 29, 19 Fed. 235, Wallace, J.; Luxton v. North River Bridge Co. 147 U. S. 337, 338, 37 L. ed. 194, 195, 13 Sup. Ct. Rep. 356.

In Union P. R. Co. v. Botsford, 141 U. S. 250, 35 L. ed. 734, 11 Sup. Ct. Rep. 1000, decided at October term, 1890, the question was whether a court of the United States could order a plaintiff, in an action for an injury to the person, to submit to a surgical examination in advance of the trial, and it was held that it could not.

Mr. Justice Gray, among other things, said: 'Congress has enacted that 'the mode of proof in the trial of actions at common law shall be by oral testimony and examination of witnesses in open court, except as hereinafter provided,' and has then made special provisions for taking depositions. Rev. Stat. §§ 861, 863 et seq. (U. S. Comp. Stat. 1901, p. 661). The only power of discovery or inspection, conferred by Congress, is to '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,' and to nonsuit or default a party failing to comply with such an order. Rev. Stat. § 724 (U. S. Comp. Stat. 1901, p. 583). And the provision of § 914 (U. S. Comp. Stat. 1901, p. 684), by which the practice, pleadings, and forms and modes of proceeding in the courts of each state are to be followed in actions at law in the courts of the United States held within the same state, neither restricts nor enlarges the power of these courts to order the examination of parties out of court.'

Ex parte Fisk was quoted from and applied, and the opinion concluded: 'The order moved for, subjecting the plaintiff's person to examination by a surgeon, without her consent, and in advance of the trial, was not according to the common law, to common usage, or to the statutes of the United States. The circuit court, to adopt the words of Mr. Justice Miller 'has no power to subject a party to such an examination as this."

March 9, 1892, the following act was approved (27 Stat. at L. 7, U. S. Comp. Stat. 1901, p. 664): 'Chap....