Dowagiac Mfg. Co. v. Lochren

• Decision Date: 31 January 1906
• Docket Number: 60.
• Citation: 143 F. 211
• Parties: DOWAGIAC MFG. CO. v. LOCHREN et al., Judges.
• Court: U.S. Court of Appeals — Eighth Circuit

143 F. 211

DOWAGIAC MFG. CO. v. LOCHREN et al., Judges.

No. 60.

United States Court of Appeals, Eighth Circuit.

January 31, 1906

(Syllabus by the Court.)

It is not the duty of an auxiliary court or judge, within whose jurisdiction testimony is being taken in a suit pending in the court of another district, to consider or determine the competency, materiality, or relevancy of the evidence which one of the parties seeks to elicit.

The rule of practice above stated prevails in the taking of testimony before a commissioner or examiner, under rules 67 and 68 in equity, in the taking of testimony before a master empowered to determine the admissibility of evidence under rules 74, 77, 78, 79, and 82 in equity, and in the taking of evidence in actions at law under sections 863, 868, and 869 Rev. St. (1 U.S. Comp. St. 1901, pp. 661, 664, 665).

Fred L Chappell, for petitioner.

Louis K. Hull, for respondents.

Before SANBORN, HOOK, and ADAMS, Circuit Judges.

SANBORN Circuit Judge.

A petition for a writ of mandamus to direct the acting judges of the Circuit Court for the District of Minnesota to issue a subpoena duces tecum and to direct certain witnesses to testify in an accounting before a master appointed by the United States Circuit Court for the District of Kentucky in the case of the Dowagiac Manufacturing Company v. Brennan & Co. and others, which was pending in the Kentucky court, has been presented to this. A decree that Brennan & Co. have infringed the patent of the complainant, and that the latter is entitled to an accounting and to a recovery of damages, had been rendered, a special master had been appointed empowered to determine the admissibility of evidence and to take the accounting, and he was engaged in the District of Minnesota in taking the testimony of C. C. Webber, the secretary of Deere & Webber, a corporation which had purchased the infringing drill of Brennan & Company and had sold it through its agents throughout Minnesota and the adjoining states. Deere & Webber was not a party to the suit. Webber testified that Deere & Webber had sold the infringing machine, through agents, in many of the towns in this territory; that the records of his corporation would disclose accurately the places in which it had sold the grain drills and the agents who made the sales. He was then asked to give the names of the towns in which, and the names of the agents through whom, Deere & Webber had sold the infringing drill so far as he knew them, and to refer to the records of the corporation and to furnish therefrom a list of those he did not remember. Counsel for the witness objected, upon the ground that the evidence sought was incompetent, irrelevant, and immaterial, and that the information was privileged, because the disclosure of the names of the agents, the number of the infringing drills which Deere & Webber had sold, and the prices which it had obtained for them would constitute a breach of the confidence reposed in the witness by the corporation, would expose its transactions to competitors, and would work irreparable injury to its business. The master overruled this objection. The witness declined to answer under the advice of his counsel. The question whether he should disclose the information was certified to the United States Circuit Court for the District of Minnesota, and that court decided that the evidence sought was not privileged, but that the witness should not be required to answer because the testimony desired was immaterial.

Thereupon the Dowagiac Manufacturing Company produced evidence to the effect that at many towns in Minnesota, North Dakota, and South Dakota the infringing closed its case upon the accounting. During the subsequent taking of testimony for the defense, several agents of Deere & Webber, at the request of that corporation or of Mr. Webber, testified to the quantities of the infringing grain drills which they had sold at various places within the territory in question and the prices which they had obtained for them. In rebuttal the complainant applied to the Circuit Court for the District of Minnesota for a subpoena duces tecum addressed to Mr. Webber to require him to produce the books and records of Deere & Webber pertaining to the sales of the infringing machine, and, at the hearing upon the application, Mr. George P. Schulz, who was one of the bookkeepers of Deere & Webber, appeared in answer to a subpoena, and testified that he was able to give the information which the complainant desired upon this subject, and would do so if he was directed so to do by proper authority; but under the advice of counsel he refused to disclose the evidence. At the close of the argument the Circuit Court refused to direct the witness to disclose the information sought by complainant's counsel and refused to issue the subpoena duces tecum.

The only reason why the acting judges of the Circuit Court declined to compel the production of the testimony which counsel for complainant sought was that, in their opinion, that evidence was not material to the questions at issue in the court in Kentucky in which the suit was commenced and was pending. Is this the real question at issue, when, in a case pending in another jurisdiction, an application is made to an auxiliary court, or to one of its judges, to elicit evidence within the jurisdiction of the latter? Ample provision to compel the production of evidence is granted to the judges of the United States courts by sections 863, 868, 869, and 870, Rev. St. (1 U.S. Comp. St. 1901, pp. 661, 664, 665), and by rules 67, 74, 75, 76, 77, and 78 in equity.

The examination in this case was proceeding before a special master, to whom the case had been referred, to take the evidence and to report the facts. He was the officer of the Circuit Court of the Kentucky district. He was empowered to hear and decide for that court, and subject to its review, upon proper exceptions, all questions relating to the admission of testimony, and his decision of these questions was, until reversed by that court, its decision. Rule 77 in equity; Bate Refrigerating Co. v. Gillette (C.C.) 28 F. 673, 674. He had determined that the evidence which complainant sought to secure was material and relevant, so that the case presented to the court below was much stronger than the ordinary application to an auxiliary court to compel the production of evidence before an examiner appointed to take testimony, under rule 67 in equity, without authority to rule upon its admissibility. We turn therefore to a consideration of the rule in the latter class of cases with the assurance that, if it is the duty of the auxiliary court or judge in such cases to decline to consider or determine the competency or materiality of evidence sought, and to compel the production and transmission of all that may possibly be material, and leave the question of its admissibility to the primary court, such must have been the duty of the judges below in the case under consideration.

In Blease v. Garlington, 92 U.S. 1, 7, 8, 23 L.Ed. 521, the Supreme Court ruled that in suits in equity all the evidence sought by either party, whether it was received or rejected by the trial court, should be elicited, and in case of an appeal, presented to the Supreme Court, to the end that, if that court were of the opinion that the evidence rejected below should have been received, it might consider it and render a final decree without remanding the suit to procure the rejected evidence. It said that, 'since the amendment of rule 67, in 1861, there could never have been any difficulty in bringing a case here upon appeal, so as to save all exceptions as to the form or substance of the testimony, and still leave us in a condition to proceed to a final determination of the cause, whatever might be our rulings upon the exceptions. * * * So, too, if testimony is objected to and ruled out, it must still be sent here with the record, subject to the objection, or the ruling will not be considered by us. ' The preparation of a suit in equity for review in the Circuit Court of Appeals is governed by the same practice. It is the province and the duty of the Circuit Court to elicit and transmit to the appellate court, not only the evidence it deems competent, relevant, and material, but also that which it deems incompetent, irrelevant, and immaterial, to the end that, if the reviewing court is of the opinion that the evidence deemed inadmissible by the Circuit Court should have been received, it may at once consider it and render a final decree without the delay of remanding the case to procure the rejected evidence. To this general rule there are two exceptions. They are that it is the duty of the court or chancellor eliciting the evidence to consider and determine the claim of privilege of a witness or other party and to refuse to compel him to produce evidence in violation of it, and that, if it clearly and affirmatively appears that the evidence sought cannot possibly be competent, material, or relevant, and that it would be an abuse of the process of the court to compel its production, it may refuse to do so.

It is a necessary corollary of this rule of practice, established by the decision in Blease v. Garlington, that it is the duty of an auxiliary court to elicit and cause to be transmitted to the primary court not only such evidence as it deems competent and material, but also that which it deems incompetent or immaterial, unless the witness or the evidence is privileged or it clearly and affirmatively appears that the evidence cannot possibly be material or relevant. In no other way can the general rule of practice be made effectual for, if the auxiliary court refuses to compel the production of the testimony because it deems it...