Emerson Co. of West Virginia v. Nimocks

• Decision Date: 25 June 1898
• Parties: EMERSON CO. OF WEST VIRGINIA v. NIMOCKS.
• Court: U.S. Court of Appeals — Fourth Circuit

88 F. 280

EMERSON CO. OF WEST VIRGINIA v. NIMOCKS.

United States Circuit Court, E.D. North Carolina.

June 25, 1898

M. R Walter, Stewart & Stewart, and Battle & Mordecai, for complainant.

F. N Busbee, John W. Hinsdale, and Ernest Wilkinson, for defendant.

SIMONTON Circuit Judge.

Before entering upon the discussion of the merits of this case, two preliminary questions must be met and decided.

1. The complainant sues as a corporation, and in its complaint sets out the fact of its corporate existence. The defendant, in his amended answer, denies all knowledge, by information or otherwise, of the corporation, of its creation or present corporate existence of complainant. In taking the testimony in chief, no evidence was offered on this point by complainant's counsel, but when taking the testimony in rebuttal, omission having been discovered, the evidence was offered, and is in the record. Ordinarily, this objection which goes to the person of the complainant, should have been taken by plea in abatement. 1 Daniell, Ch. Prac. (Perk. Ed.) 654. The defendant, having fully answered, may be deemed to have waived this objection. Society for the Propagation of the Gospel v. Town of Paulet, 4 Pet. 480; Pullman v. Upton, 96 U.S. 329. If, however, it be concluded that the answer seeks to avail itself of a defense which could have been taken by plea, it does not accomplish this result. At the most, the answer amounts to a general denial. That will not raise this issue. U.S. v. Insurance Companies, 22 Wall. 100; Steamship Co. v. Rodgers, 21 S.C. 27; Association v. Read, 93 N.Y. 477. And above all, inasmuch as the omission to introduce the evidence in chief was an inadvertence of counsel, this will be excused, especially as the formal testimony is introduced before the taking of evidence has closed, and no possible harm could have come to defendant. Hood v. Pimm, 4 Sim. 101; Beach, Eq. Prac. Sec. 549. See, also, Ryan v. Martin, 91 N.C. 464; Johnson v. Smith, 86 N.C. 498.

Another point must be noticed. The time for taking rebuttal testimony in this case on the part of the complainant had been extended to July 21, 1897. On 6th September, 1897, application was made by complainant to the circuit court (Judge Purnell presiding), for further extension. This was refused. The application was renewed on 18th September following, and was again refused by Judge Purnell. Notwithstanding this refusal, the complainant went on and took the testimony of Jacob Ulman, which appears at large on the record. The counsel of defendant were notified of the intention to take this testimony, and of the time and place. They did not attend. It is no part of the record, and will be disregarded. It does not stand on the same footing as testimony taken without previous leave of the court, as in Coon v. Abbott, 37 F. 98, and Wenham v. Switzer, 48 F. 612. This testimony was taken despite the refusal of the court to allow it to be done.

One other question has been made in this case, important as one of practice. Just before closing the examination in chief of complainant's expert, Prof. Harry Fielding Reid, he was asked the question: 'Just state in conclusion what you understand to be the invention of Emerson, as expressed in patent in suit No. 535,982. ' Replying to this question, he read his answer from typewritten sheets.

To this the defendant objected. Upon cross-examination it appeared that these typewritten sheets were prepared by counsel for complainant in his office, not from any notes of the witness, and afterwards submitted to the witness on the morning of the examination. He revised them until they exactly represented his opinion on the subject. The original memorandum was produced, and the changes made by witness were shown. These did not change the memorandum in any material respect. Can this testimony be admitted? If an expert in a patent case had himself reduced to writing the result of his examination of a patent, and had then read it, this may not be objectionable. So much depends upon clear exposition of the thought and a careful use of words and sentences that previous consideration and preparation would help the examination. But when the paper is prepared by counsel, who is cognizant of the strength and weakness of his case, and whose dominant idea must be a plausible presentation of its merits and concealment of its demerits, who also prepares the paper without the restraint of his oath, a very different result follows. All men are prone to fall in with the current of thought in a clear and able presentation of a subject, and unconsciously to give their assent to that which is so well expressed. The course adopted here is perilously near a leading question. According to Greenleaf on Evidence (section 438), a lord chancellor indignantly suppressed a deposition made up by counsel from the notes of the witness himself. And the weakness of all evidence offered in the shape of affidavit is that the testimony is by one given in the language of another. In the present case the evidence is that of an expert. It is an opinion. Its value is gauged by the weight to be given to the opinion. Delivered in this way, it loses very much of the respect which would otherwise have been given it. For this reason it is not stricken out.

The bill in this case is filed by the Emerson Company of West Virginia, a corporation, against Robert Mitchell Nimocks. It sets up the ownership by the complainant of patents, dated 19th March, 1895, numbered 535,981 and 535,982, tracing its title thereto, and charges that the defendant has infringed the same. In his answer, the defendant denies the originality of the invention claimed by the complainant; averred that it is controverted also by the Standard Dry-Kiln Company, which controversy is in litigation; that the defendant is using a kiln under contract with the Moore-Cain Dry-Kiln Company, and that the patents used by him were originally issued to La Fayette Moore, No. 524,598, 14th August, 1894, and 554,134, February 4, 1896. Subsequently, by leave of court, he filed an amended answer, in which, repeating the defenses in his original answer, he averred that the alleged invention and improvements of the patents claimed by complainant were covered by a number of other patents theretofore issued, setting them out in detail; that the improvements claimed by complainant were really made by La Fayette Moore; that they had been in public use years before; and that there was irregularity, prolixity, redundancy, and concealment in the descriptions and specifications under which the patents of complainant were obtained. The cause being at issue, a mass of testimony was taken, and it comes up for a hearing on the merits. During the taking of the testimony, counsel for complainant gave notice that he would not rely upon patent No. 535,981 at all, and that he would rely only upon claims 2, 3, 5, 6, and 9 of patent No. 535,982.

The functions and advantages of this Emerson invention are thus described:

'This invention relates to an improved form of drying kiln, designed particularly for drying lumber, but useful in drying any other material by heated air; and the object of the invention is to construct a simple, durable, and inexpensive kiln, which will be effective in operation, economical in heat, and wherein sufficient moisture (derived from the substance of material being dried) will be automatically retained during the initial stages to keep the exposed surfaces of such substance or material from becoming too dry, and to maintain such surfaces in the best condition until the internal moisture therein has been extracted.'

The invention is illustrated by a drawing which appears below, and is thus explained:

(Image Omitted) A represents inlets for cold air; B, B, air passage; C, opening to radiators and drying chamber; D, radiators, E, E, E, E, iron tracks for...