Horizons Titanium Corporation v. Norton Company, 5764.

• Citation: 290 F.2d 421
• Decision Date: 05 May 1961
• Docket Number: No. 5764.,5764.
• Parties: HORIZONS TITANIUM CORPORATION, Appellant, v. NORTON COMPANY, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (1st Circuit)

290 F.2d 421 (1961)

HORIZONS TITANIUM CORPORATION, Appellant, v. NORTON COMPANY, Appellee.

No. 5764.

United States Court of Appeals First Circuit.

Heard March 8, 1961.

Decided May 5, 1961.

Herbert P. Kenway, Boston, Mass., with whom Kenway, Jenney, Witter & Hildreth, Boston, Mass., and Pennie, Edmonds, Morton, Barrows & Taylor, Washington, D. C., were on brief, for appellant.

James E. Mrose, Boston, Mass., with whom Robert L. Thompson, Boston, Mass., Allan R. Redrow, Worcester, Mass., and Dike, Thompson, Bronstein & Mrose, Boston, Mass., were on brief, for appellee.

Before WOODBURY, Chief Judge, and HARTIGAN and ALDRICH, Circuit Judges.

ALDRICH, Circuit Judge.

In 1959 the Commissioner of Patents dismissed a patent application in interference on the ground that after execution by the inventor counsel had made certain alterations therein not shown to be "immaterial or harmless." In order to challenge the propriety of this action Horizons Titanium Corporation, the applicant's apparent successor in interest, instituted a mandamus proceeding in the United States District Court for the District of Columbia against the Commissioner of Patents and the Secretary of Commerce. A motion to dismiss for failure to state a claim was filed therein and denied. Thereafter, properly invoking the procedures of Rule 45(d), Fed. R.Civ.P., 28 U.S.C., Horizons obtained from the Clerk of the United States District Court for the District of Massachusetts two subpoenas duces tecum addressed to the president and an employee of Norton Company, appellee herein. These subpoenas required the production of a copy of the other patent application involved in the interference proceeding, copies of all correspondence with the United States Patent Office concerning it, and copies of all papers relating to its ownership. Neither Norton nor its summoned employee are parties to the proceeding pending in the District of Columbia, but the employee was a party to the original interference and Norton is the alleged owner of the application involved. Norton filed in the court below a motion to quash the subpoenas, or for a protective order to prevent disclosure of trade secrets, or, in the alternative, for a stay order.

In support of its motion Norton filed a memorandum of law interspersed with unverified assertions of fact, plus an appendix setting out, inter alia, the two opinions of the Commissioner of Patents of which Horizons is complaining. In addition, it filed an affidavit of its general counsel to the effect that he is "speaking for the president" of Norton; that the documents subpoenaed "relate to trade secrets, secret processes, developments, research, and inventions of Norton Company which are confidential and to the best of my personal knowledge and belief have never been publicly disclosed"; and further stating that to the best of his knowledge and belief Norton did not possess any information relevant to the proceedings pending in the District of Columbia. Copies of the pleadings in the District of Columbia were not offered by movant. The court entered an order quashing the subpoenas, and Horizons appeals.

This matter first came to our attention as the result of a motion by appellee to dismiss the appeal for lack of jurisdiction. That motion appeared on its face to want merit, but because it was supported by authority from another circuit, we reserved decision until final argument. Admittedly, as neither 28 U.S.C. § 1292(a) nor 28 U.S.C. § 1292(b), dealing with interlocutory orders, is involved here, we have no jurisdiction unless the court's order was a "final decision" within the meaning of 28 U.S.C. § 1291. In Palmer v. Fisher, 7 Cir., 1956, 228 F.2d 603, certiorari denied 351 U.S. 965, 76 S.Ct. 1030, 100 L.Ed. 1485, Fisher obtained from the United States District Court for the Northern District of Illinois a subpoena duces tecum for the purpose of taking the deposition of one Pierce in aid of an action pending in the Southern District of Florida. Pierce, who was not a party to the Florida proceeding, obtained from the Illinois district court an order quashing the subpoena, suppressing the deposition and requiring Fisher to deliver to the court for destruction that portion of the deposition which had already been taken. On appeal, Pierce moved to dismiss for lack of jurisdiction on the ground that the order of the district court was not a final decision. The court said, at page 607, of 228 F.2d,

"If the order suppressing the deposition could not now be appealed, it could not be effectively appealed at all. This case is especially strong because the main proceeding is in a different circuit. If the Court of Appeals for the Fifth Circuit did decide that the deposition was improperly quashed and destroyed, it would have no power to correct the error."

With this we are in complete accord. But we are correspondingly at a loss to see how the Fifth Circuit would have had power to correct in any way an improper quashing of the subpoena by the Illinois district court. The Seventh Circuit, however, refused to apply the same reasoning to the ruling on the subpoena. Instead, it purported to distinguish this part of the order in the second half of one sentence: "The same is, of course, true as to the order quashing the subpoena, but another subpoena could always be obtained." Ibid. (Ital. suppl.)

What the court meant by this was not elucidated. We can hardly think that an order of a district court quashing a subpoena lacks finality simply because the movant remains free to start all over again. Must he seek a ruling from each of the judges composing the bench of the particular district? Appellee seeks to meet this absurdity by saying that "of course what the court meant was that appellant would require more favorable reasons and circumstances to obtain what it seeks, rather than a more favorable district judge." (Ital. in orig.) Assuming that this was what the court had in mind, and that a second application would not be precluded by principles of res judicata, cf. Restatement, Judgments §§ 61-63 (1942); Developments in the Law — Res Judicata, 1952, 65 Harv.L.Rev. 818, 824-27, 835, 836 & n. 121, it would be a singular rule that a decision on certain facts and circumstances lacks the finality necessary for an appeal simply because appellant could start over again by alleging other facts and circumstances which might produce a different result.

Possibly the Palmer case may have rested less on its stated distinction than on the court's belief that any other result was precluded by well-settled precedents. The court referred to cases "holding that an order granting or denying a subpoena or a motion to quash a subpoena is interlocutory and not appealable (e. g., Cobbledick v. United States, 1940 309 U.S. 323, 60 S.Ct. 540, 84 L.Ed. 783; National Nut Co. of California v. Kelling Nut Co., 7 Cir., 1943 134 F.2d 532). We recognize this well established rule concerning subpoenas * * *." 228 F.2d at pages 605-606. In fact, however, neither Cobbledick nor National Nut involved a denial of a subpoena or a granting of a motion to quash one. Both held unappealable a denial of a motion to quash.¹ In National Nut, as the court there pointed out, the denial of the motion to quash left the unsuccessful party with a later opportunity to assert his rights. Cf. Cobbledick, and cases cited. The difference between that circumstance and the present is emphasized by the caution expressed in Cobbledick, "Due regard for efficiency in litigation must not be carried so far as to deny all opportunity for the appeal contemplated by the statutes." 309 U.S. at page 329, 60 S.Ct. at page 543. Compare Swift & Co. Packers v. Compania Colombiana del Caribe, 1950, 339 U.S. 684, 688-689, 70 S.Ct. 861, 94 L.Ed. 1206, with Cushing v. Laird, 1882, 107 U.S. 69, 2 S.Ct. 196, 27 L.Ed. 391. See also Mosseller v. United States, 2 Cir., 1946, 158 F.2d 380, 383.

The appealability of orders cannot be decided by rote. It is not the fact that the order below dealt with a motion to quash a subpoena duces tecum that is controlling, or, perhaps, not even that the motion was granted.² Nor does it make any difference that the court's action was not a final judgment in the usual sense. What is critical is whether the party unsuccessfully seeking the subpoena has any other means of obtaining review. Cf. Swift & Co. Packers v. Compania Colombiana del Caribe, supra; United States v. Cefaratti, 1952, 91 U.S. App.D.C. 297, 202 F.2d 13, 15-16, certiorari denied 345 U.S. 907, 73 S.Ct. 646, 97 L.Ed. 1343. Here the order of the district court made a final disposition of the only proceedings in its district growing out of a particular controversy, and the only proceeding pending between these particular parties anywhere. It cannot be said to lack finality either because it was ancillary to some other proceeding in another district, or because before some other district judge, or on some other set of facts, a different decision might have been made. The motion to dismiss for lack of jurisdiction must be denied.

Before we turn to the merits, there is a procedural matter. Since the district court wrote no opinion, and made no findings of fact or conclusions of law, we do not know what influenced it to quash the subpoenas, or the particular ground on which it acted. Its failure to make findings was presumably in reliance upon Rule 52(a), which concludes with the statement that findings "are unnecessary on decisions of motions under Rules 12 or 56 or any other motion except as provided in Rule 41(b)." Appellant argues that, in spite of this language, findings of fact and conclusions of law should have been made. As a matter of principle, we might agree.³ In their absence we find ourselves in the position of reviewing either an exercise of discretion or a ruling of law without knowing which, and without knowing what facts the court found or rejected. This places upon an appellant a burden which should...