Dover v. Greenwood

• Decision Date: 07 March 1910
• Docket Number: 2,664.
• Citation: 177 F. 946
• Parties: DOVER et al. v. GREENWOOD et al.
• Court: U.S. District Court — District of Rhode Island

177 F. 946

DOVER et al. v. GREENWOOD et al.

No. 2,664.

United States Circuit Court, D. Rhode Island.

March 7, 1910

Horatio E. Bellows and Alex. P. Browne, for complainants.

Wilmarth H. Thurston, for respondents.

BROWN District Judge.

This is a bill in equity under section 4915, Rev. St. (U.S. Comp. St. 1901, p. 3392).

On demurrer the defendants contended that section 4915 had been repealed by Act Feb. 9, 1893 (27 Stat. 436), creating the Court of Appeals of the District of Columbia. This contention was overruled by the opinion of this court, reported in 143 F. 136. See, also, Appert v. Brownsville Co. (C.C.) 144 F. 117, and the opinion of the Circuit Court of Appeals for this circuit in Prindle v. Brown, 155 F. 531, 84 C.C.A. 45.

Upon the overruling of the demurrer, the complainants proceeded to take testimony pursuant to equity rule 67. Thereafter the defendants moved that an order be entered directing that evidence taken in interference proceedings in the Patent Office be made part of the evidence in this case, stating that the purpose of the motion was:

'That the defendants may be advised whether it will be necessary for them to retake for the purpose of this case the testimony of witnesses already fully taken in said interference case.'

This motion was denied, and an opinion handed down to the effect that the testimony offered was secondary evidence, and could not be used unless upon a showing that the testimony of the witnesses was not obtainable in the present case. This opinion is reported in 154 F. 854.

At the final hearing the complainants submitted their case upon the proposition that Dover's application, filed in the Patent Office September 11, 1901, establishes for Dover a date of invention earlier than any date proven as the date of Greenwood's invention. The defendants at the hearing still insisted upon their right to prove their case by evidence taken on behalf of Greenwood in the interference proceedings. They rely upon the proposition that it is the general rule to admit in evidence in a case between the same parties or their privies, and involving the same subject-matter, depositions taken in a previous case. In support of this proposition they cite 3 Greenleaf on Evidence, pp. 343-354; 16 American Dig. p. 1271, Sec. 288 and cases cited; also, Atkins v. Anderson, 63 Iowa 739, 19 N.W. 323; McCormick v. Howard, 15 Fed.Cas 1306-1308.

The defendants' brief, however, does not give due consideration to the question whether such evidence will be received without a showing that the witnesses are not available in the present suit. Ecaubert v. Appleton, 67 F. 917, 15 C.C.A. 73, was a suit in equity, in which the Circuit Court of Appeals for the Second Circuit sustained an objection to the admission of testimony given in interference proceedings, without proof that the witnesses were dead or unavoidably absent.

In Stonemetz v. Brown Co. (C.C.) 57 F. 601, it was held that in a suit in equity certain testimony taken in interference proceedings was inadmissible.

Clow v. Baker (C.C.) 36 F. 692, was also a suit in equity, in which a motion to use depositions taken in interference proceedings was denied.

Each of these cases is directly in conflict with the defendants' proposition that it is the general and unqualified rule to admit in a case between the same parties evidence taken in a previous case. The defendants attempt to distinguish these cases upon the ground that they were not upon bills in equity under section 4915. The rules governing the admissibility of evidence in equity are general rules, and the defendants to support the contention as to the general rule cite cases which were not upon bills in equity under section 4915.

The defendants' second proposition, that there are special considerations pertaining to a bill under section 4915, is a distinct proposition, and should not be confused with the first proposition advanced by defendants as to the general rule of evidence. The limitations upon the right at common law to use such testimony are stated in the opinion in West v. Louisiana, 194 U.S. 258, 24 Sup.Ct. 650, 48 L.Ed. 965.

In the discussion of the topic 'Former Evidence,' in 16 Cyc. 1088, it is stated that one of the necessary conditions is that a sufficient reason is shown why the original witness is not produced, and that this is necessary to justify the court in receiving it. See, also, our former opinion (154 F. 854).

The important question is whether under the rules and practice of the chancery court a different rule prevails, so that such former testimony is receivable, irrespective of the ability of the party offering it to produce the witnesses in the present cause.

There is no question of the defendant's right to use any part of the interference record to prove admissions of the complainants or inconsistencies between the testimony given by the complainants' witnesses in this proceeding and their testimony given in the interference proceedings. See Dover v. Greenwood (C.C.) 154 F. 854, 855.

The question arises concerning the defendants' attempt to prove its case or portions thereof by testimony taken in their behalf in a former case.

Section 4915, Rev. St., provides a 'remedy by bill in equity.'

Section 862, Rev. St. (U.S. Comp. St. 1901, p. 661), provides:

'The mode of proof in causes of equity and of admiralty and maritime jurisdiction shall be according to rules now or hereafter prescribed by the Supreme Court, except as herein specially provided.'

The sixty-seventh equity rule contains the provision:

'Such examination shall take place in the presence of the parties or their agents, by their counsel or solicitors, and the witnesses shall be subject to cross-examination and re-examination, all of which shall be conducted as near as may be in the mode now used in common-law courts.'

It is apparent that, if the defendants be allowed to rely upon the proofs taken in interference, the complainants will be deprived of the opportunity to make such cross-examination of the witnesses as they may desire, or as may be competent in the present cause.

The suggestion of the hardship of compelling the defendants to call upon their own behalf in the present suit witnesses whose testimony has already been taken in interference proceedings is met by the consideration that the complainants ought not to be deprived of the ordinary rights of a complainant in equity, unless from necessity.

Clow v. Baker (C.C.) 36 F. 692, is directly in point upon the question whether a mere suggestion of inconvenience or of expense is a sufficient ground for permitting the use of the record in the interference case in a subsequent suit in equity.

So far as I have been able to investigate this subject, it seems that both upon principle and authority, in the court of chancery as well as in the court of law, testimony given in a former trial is regarded as secondary evidence. See Gresley's Equity Evidence, 131-174, 184; Taylor on Evidence, 464-471 (9th Ed.) 1897.

The contention that upon a motion for leave to read such testimony the ability of the party to produce the witnesses in the cause is immaterial seems both contrary to principle and to the weight of authority. Taylor on Evidence, Sec. 471; Blagrave v. Blagrave, 1 De G. & Sm. 252; Llanover v. Homfray, 19 Ch.D. 224; Carrington v. Cornock, 2 Sims, 567.

The defendants' brief states, however, that Thomas F. Greenwood, one of the parties to the interference and a defendant in this case, was unavailable, being outside the jurisdiction of this court. The defendant Frederick H. Watkins was asked:

'Q. Have you made any effort to find out whether said Thomas F. Greenwood is now in the city of Providence or in the state of Rhode Island?

'A. Yes.

'Q. And have you been able to locate him anywhere in the state of Rhode Island?

'A. No. * * *

'Q. And do you know whether said Thomas F. Greenwood left the state of Rhode Island about that time; that is, nearly three years ago?

'A. He did.

'Q. And have you ever heard of his returning to Rhode Island within that time?

'A. No.

'Q. And do you know where said Thomas F. Greenwood now is?

'A. No.'

The witness also stated that he last saw Greenwood in Rhode Island nearly three years ago, had not since seen him, nor known where he was.

There was no testimony from the other defendant, David M. Watkins, copartner of the previous witness, as to any efforts to secure the testimony of Greenwood or as to knowledge of his whereabouts.

This testimony is an insufficient basis for the introduction of secondary evidence. Stein v. Bowman, 13 Pet. 209-223, 10 L.Ed. 129; 16 Cyc.p. 1098. The testimony as to the availability of the witness Howard P. Chase is also insufficient as a basis for the introduction of his former testimony.

The defendant further contends that, even if under the general rules of evidence the testimony is inadmissible, it is yet admissible on the ground that there are special considerations pertaining to a bill in equity under section 4915 of such a character as to make it not only proper, but necessary, that the record and evidence in the interference should be made a part of the record in such bill in equity: First. Because a bill in equity under section 4915 constitutes a step in the prosecution of an application for a patent. Gandy v. Marble, 122 U.S. 439, 7 Sup.Ct. 1290, 30 L.Ed. 1223; In re Hien, 166 U.S. 438, 17 Sup.Ct. 624, 41 L.Ed. 1066.

Second. A suit under section 4915 is in the nature of a suit to set aside a judgment. Morgan v. Daniels, 153 U.S. 120, 14 Sup.Ct. 772, 38 L.Ed. 657.

Third. It is important and essential that the court should have before it in a suit under section 4915 the preliminary statement which the complainant made...