Edison Electric Light Co. v. United States Electric Lighting Co.

• Citation: 44 F. 294
• Parties: EDISON ELECTRIC LIGHT CO. v. UNITED STATES ELECTRIC LIGHTING CO.
• Decision Date: 18 October 1890
• Court: U.S. District Court — Southern District of New York

44 F. 294

EDISON ELECTRIC LIGHT CO. v. UNITED STATES ELECTRIC LIGHTING CO.

United States Circuit Court, S.D. New York.

October 18, 1890

Samuel A. Duncan and Edmund Wetmore, for the motion.

C. A Seward and Grovenor Lowrey, contra.

LACOMBE Circuit Judge.

Complainant is prosecuting a suit for alleged infringement of a patent for incandescent electric lamps, (No, 223,898, application November 4, 1879,) issued January 27, 1880, to Thomas A Edison, and by him assigned to the complainant. On December 11, 1879, said Edison filed an application in the patent-office for improvements in electric lamps, and subsequently, namely, on December 15, 1880, divided such application into two parts, and embodied one division of the same in a new or divisional application of that date. No patent has been issued upon such divisional application. The defendant is endeavoring to prove the contents of such divisional application. In connection with such application the patent-office has, it is claimed, sent various letters to the applicant, Edison, and to the complainant, and the said applicant and complainant have also sent letters relating thereto to the patent-office. The originals of the application and of the letters to the patent-office are with the commissioner of patents, who also presumably has copies of the letters sent by his office. The complainant has possession of the original letters from the patent-office and has copies of the letters to that office and of the application. These papers are in the hands of one of its counsel, who claims that they are privileged communications, and refuses to produce them. The proper officer of the complainant corporation has been duly subpoenaed duces tecum to produce the papers, and declines to do so, refusing to recall them from its counsel so as to obey the subpoena. Application has been made by the defendant to the supreme court of the District of Columbia for a mandamus to compel the commissioner of patents to furnish copies in accordance with the provisions of section 892, Rev. St. U.S. That application has been refused.

Complainants concede that the application for a mandamus and its refusal by the court puts the defendant in the same situation as if it had duly subpoenaed the commissioner to appear before an examiner, and, upon his refusal to produce the papers in obedience to such subpoena, had applied to the court in the District of Columbia to punish him for contempt, without success.

It was further conceded on the argument that the defendant has done all that is necessary to put it in a position to give secondary evidence of the contents of any of those documents, the originals of which, if present, would be admitted in evidence. Both of these applications were filed by Edison in pursuance of a contract made with the complainant corporation November 15, 1878. By this he not only transferred to the complainant the inventions which he had already patented, but also expressly covenanted to prosecute, with his utmost skill and diligence, further necessary investigations and experiments, and to promptly apply for patents for any further inventions and improvements in the field of electric light. He also agreed to prepare, or cause to be prepared, specifications, etc., of such inventions and improvements 'as may be required by the company,' to deliver the same to the company at its request, and to request, upon application for letters patent, that the same be issued to the company as sole owner. By this contract he conveyed to the complainant all such inventions and improvements which he might make for the space of five years after its date. The attorney who prepared, under Mr. Edison's directions, the particular application with which this motion is concerned, was the complainant's lawyer; and all the expenses of the application were borne by it. The theory on which defendant seeks to make proof of the divisional application and of the declarations made by Edison and by the complainant in their letters to the patent-office, concerning such application, is briefly this: That there is in the patent sued upon an ambiguity, its language being open to either of two constructions, one a very broad one, the other much more restricted; that, inasmuch as the language of the patent is the language of the applicant, his admissions are admissible for the purpose of removing the doubt with which his choice of words has surrounded the document; that for the purpose of making applications for patents covering inventions and discoveries of the kind conveyed absolutely to the complainant by the contract of 1878, Edison and the complainant are practically the same; that in the particular divisional application above referred to Edison uses language which is inconsistent with the claim that in the earlier application (the one for the patent in suit) he used the ambiguous words or phrases in their broad meaning; and, finally, that when the letters to the patent-office are read in connection with the letters to which they are replies, this fact will still more plainly appear.

This argument deals, of course, with the materiality of the proposed evidence when produced, and to this motion, which is practically directed to securing its presence in court, the complainant objects that the evidence, if produced, would be immaterial. That question, however, should not be determined upon application to produce the papers. The court should pass upon it with the proposed evidence before it, so that it may act intelligently, and that an exception to its refusal to admit the testimony, should it so refuse, may be of avail to the exceptant upon appeal. If the only objection to admitting these documents in evidence be that they are immaterial, that objection is of no avail in opposition to an application which calls for their production. Without therefore finally determining the question as to the materiality of these documents, it is sufficient to say that, in view of the contract relations between Edison and the company, and of the rule of law as to the admissibility of a party's admissions, and in view of the effect accorded to such admissions in the case cited by defendant, (Giant-Powder Co. v. California, etc., Co., 4 Fed.Rep. 720,) and, finally, in view of the contents of the documents as disclosed by the moving papers, there is not found in the objection as to the materiality of the evidence sufficient to warrant the refusal of the officers of the corporation to obey the subpoena duces tecum, and to produce the documents, which are concededly in the hands of its counsel, subject to its orders and under its control.

It is however, further objected that the documents are privileged; that the application and letters patent are the result of consultations between the applicant and his counsel; that their phraseology must necessarily reflect both the information given by the client to the counsel and the advise given by the counsel to the client; and that they have been placed in the hands of counsel under the protection of the confidential relation. Of the various cases cited upon the argument, many deal with the question as to the duty of the counsel. Coveney v. Tannahill, 1 Hill, 33; Wright v. Mayer, 6 Ves. 280a; Dale v. Denison, 4 Wend. 558; Kellogg v. Kellogg, 6 Barb. 116; Chirac v. Reinicker, 11 Wheat. 280; Insurance Co. v. Schaefer, 94 U.S. 457; Hibberd v. Knight, 2 Exch. 11; Rex v. Dixon, 3 Burrows, 1687. In the case last cited, Lord MANSFIELD said that, instead of producing the papers, the attorney ought immediately upon receiving the subpoena to have delivered them up to his client. The defendant, however, is not contending upon this motion that Mr. Dyer, the counsel who received these documents, is under any obligation to produce them in response to the subpoena, or to testify as to their contents. The only question now...