Tucker v. Peiler, 251.

• Decision Date: 10 March 1924
• Docket Number: 251.
• Parties: TUCKER et al. v. PEILER et al.
• Court: U.S. Court of Appeals — Second Circuit

297 F. 570

TUCKER et al. v. PEILER et al.

No. 251.

United States Court of Appeals, Second Circuit.

March 10, 1924

George Ramsey, of New York City, and Edwin P. Corbett, R.E. Fidler and John J. Mahoney, all of Columbus, Ohio, for appellants.

Dorsey & Cole, of Washington, D.C., John P. Bartlett, of New York City, and Vernon M. Dorsey and Sidney F. Parham, both of Washington, D.C., for appellees.

Before ROGERS, HOUGH, and MANTON, Circuit Judges.

MANTON Circuit Judge.

The appellees were engaged in examining as a witness one William H. Honiss of Hartford, Conn., in an interference proceeding now pending in the United States Patent Office to decide the question of priority of invention between them and the appellants, and which is referred to as Peiler v Tucker and Reeves, No. 44,251. The invention relates to glass machinery, and more especially to apparatus for delivering lumps of viscous glass for subsequent fabrication by pressing or blowing machines. The proceeding is a consolidation of applications, two of which were filed by the appellants, one October, 1913, and the other September 16 1916, and the application of Peiler, appellee, filed March 28, 1917. The appellee, Peiler, seeks to prove conception of the invention in issue and reduction to practice prior to the appellants. In this examination the question of diligence in reducing the invention to practice is involved. The appellee Honiss, an engineer, who was working with Peiler during the period in which it is said that the invention was conceived and reduced to practice, was being cross-examined, and refused to answer questions when asked, and to produce for the purpose of cross-examination a large number of documents, papers, books, reports, diaries, etc. He refused to answer and to produce the exhibits on the advice of counsel.

A petition was filed in the District Court, under the authority of Revised Statutes, Sec. 4906, as amended by the Act of Congress of February 18, 1922, Sec. 7 (Comp. St. Ann. Supp. 1923, Sec. 9451), and also by virtue of Revised Statutes, Sec. 869 (Comp. St. Sec. 1480), invoking the aid of the court to compel the witness to produce the documents and answer the questions specified in the petition. The District Court denied the application, stating that the denial was without prejudice to the petitioners making a motion for a subpoena duces tecum and offering the evidence on their own behalf. This appeal is from the order entered thereon. Section 4906 of the Revised Statutes (16 Stat. 204, as amended by Act Feb. 18, 1922, Sec. 7) provides:

'The clerk of any court of the United States, for any district or territory wherein testimony is to be taken for use in any contested case pending in the Patent Office, shall, upon the application of any party thereto, or of his agent or attorney, issue a subpoena for any witness residing or being within such district or territory, commanding him to appear and testify before any officer in such district or territory authorized to take depositions and affidavits at any time and place in the subpoena stated. But no witness shall be required to attend at any place more than forty miles from the place where the subpoena is served upon him; and the provisions of section 869 of the Revised Statutes relating to the issuance of subpoenas duces tecum shall apply to contested cases in the Patent Office.'

The right to invoke the aid of the court for a subpoena duces tecum is found in section 869 of the Revised Statutes (4 Stat. 199), and is as follows:

'Subpoena Duces Tecum under a Dedimus Potestatem. When either party in such suit applies to any judge of a United States court in such district or territory for a subpoena commanding the witness, therein to be named, to appear and testify before said commissioner, at the time and place to be stated in the subpoena, and to bring with him and produce to such commissioner any paper or writing or written instrument or book or other document, supposed to be in the possession or power of such witness, and to be described in the subpoena, such judge, on being satisfied by the affidavit of the person applying, or otherwise, that there is reason to believe that such paper, writing, written instrument, book, or other document is in the possession or power of the witness, and that the same, if produced, would be competent and material evidence for the party applying therefor, may order the clerk of said court to issue such subpoena accordingly. And if the witness, after being served with such subpoena, fails to produce to the commissioner, at the time and place stated in the subpoena, any such paper, writing, written instrument, book, or other document, being in his possession or power, and described in the subpoena, and such failure is proved to the satisfaction of said judge, he may proceed to enforce obedience to said process of subpoena, or punish the disobedience in like manner as any court of the United States may proceed in case of disobedience to like process issued by such court. When any such paper, writing, written instrument, book, or other document is produced to such commissioner, he shall, at the cost of the party requiring the same, cause to be made a correct copy thereof, or of so much thereof as shall be required by either of the parties.'

The petition prays for a writ commanding the production of the documents, not as evidence, but 'for use by counsel for Tucker and Reeves on his cross-examination. ' The District Judge must be deemed to have denied the prayer for the production for this purpose as a matter of discretion. However, he reserved the right to the appellants to bring a petition for a subpoena duces tecum during their own time for taking testimony. Such right of review as we may have of that determination, must rest upon a finding that there was an abuse of discretion below. It is only in an extreme and extraordinary exercise of discretion that we will review the action of the District Judge. We fail to discover any wrongful exercise of discretion in respect of the matters here complained of. The mode of conducting trials, the order of introducing evidence, and the time when it is to be introduced, are properly matters belonging to the practice in the court below, or in the tribunal which the court below is asked to assist by granting a writ of subpoena. Phila. & Trenton R.R. v. Stimpson, 14 Pet. 448, 10 L.Ed. 535. There it was said:

'It seems to us, therefore, that all courts ought to be, as indeed they generally are, invested with a large discretion on this subject, to prevent the most mischievous consequences in the administration of justice to suitors; and we think that the Circuit Courts possess this discretion in as ample a manner as other judicial tribunals. We do not feel at liberty, therefore, to interfere with the exercise of this discretion. * * * It is sufficient for us, however, that it was a matter of discretion and practice, in respect to which we possess no authority to revise the decision of the Circuit Court.'

See, also, Wilmoth v. Hamilton, 127 F. 48, 61 C.C.A. 584.

In Vacuum Cleaner Co. v. Platt, 196 F. 398, 116 C.C.A. 220, this court had presented to it a question of whether or not a subpoena duces tecum should issue in an infringement case and held that it was within the discretion of the lower ancillary court, and as such was not reviewable by mandamus.

An order entered denying or granting a petition for a writ of subpoena under the statute may be the legitimate exertion of judicial authority in a case or controversy, but it is not of such finality as to make it reviewable here on appeal. In Commerce Commission v. Brimson, 154 U.S. 447, 155 U.S. 3, 14 Sup.Ct. 1125, 15 Sup.Ct. 19, 38 L.Ed. 1047, 39 L.Ed. 49, to which we are referred, a cause was pending before the Interstate Commerce Commission, and there was a final determination of the issues which were within the jurisdiction of the Commission. The Supreme Court had before it the question only whether, within the jurisdiction of the Circuit...