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

• Decision Date: 05 January 1891
• Parties: EDISON ELECTRIC LIGHT CO. v. UNITED STATES ELECTRIC LIGHTING CO.
• Court: U.S. District Court — Southern District of New York

45 F. 55

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

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

January 5, 1891

After the former hearing (see 44 F. 294) the following additional memorandum was filed by LACOMBE, J.:

'The documents called for by the subpoenas have now been brought into court. In excuse for not delivering them to the examiner it was urged that some further objection to their presentation in evidence is to be made, which counsel thought should be made not before the examiner, who sits without power to rule upon objections, but before the court. The motion to punish for contempt is therefore denied. The papers are delivered to the examiner. When any one of them is called for by the defendant, if objection to its exhibition is made by counsel for complainant, the examiner will certify the objection to the court and send therewith the document itself. Thereupon the court will rule upon the objection.'

The case now comes up for hearing upon an objection certified by the examiner. private papers.

C. A Seward and Grosvenor Lowery, for complainant.

E Wetmore and S. A. Duncan, for defendant.

LACOMBE Circuit Judge.

This case now comes before the court upon an objection certified by the examiner. It is unnecessary to recite the facts already set forth in the decision of October 18th and memorandum of November 24th. Subsequently thereto, both parties being before the examiner, the defendant's counsel demanded that complainant produce, for the examination of defendant's counsel and for use as evidence if defendant be so advised, the full test of the divisional application made by Thomas A. Edison, December 15, 1880, being one of the papers covered by the subpoena duces tecum heretofore served upon the officers of the company. The paper being placed in the examiner's hands, complainant's counsel object to its being handed to or inspected by defendant's counsel, upon three grounds: (1) Because the production and delivery of the papers for the purpose specified cannot lawfully be compelled. (2) Unless defendant's counsel will set forth that he intends to offer the papers in evidence when produced. (3) Unless defendant's counsel will also set forth that he intends to offer in evidence all the other papers connected with the said application. The particular paper is not the original divisional application, but it has been proved to be a copy thereof by complainant's own witness, and is competent as secondary evidence if the case would warrant the production and admission of the original. The copy bears various pencil memoranda, apparently not the original, indicating changes for subsequent amendments. They were made by counsel and would, for that reason, be privileged were it not that it appears from examination of the other papers in the box that they have all been communicated to the patent-office, and are therefore no longer solely communications between counsel and client. The various objections now urged have been already passed upon. Inasmuch, however, as complainant's counsel insist that an adverse decision will seriously affect not this case only, but also what they claim to be well-settled rules of evidence in similar cases, careful consideration has been given to their exhaustive brief and the entire subject re-examined. The conclusion heretofore reached remains unchanged.

The authorities cited by the complainant do not go to the extent of holding that it is only by bill of discovery or similar method that some particular piece of documentary evidence is to be obtained. No doubt when it is brought into court, the objection that 'it is against conscience and the spirit of Anglo-Saxon laws and liberty' to permit its inspection by the other side, or its introduction in evidence, may be urged, as it has been in this case, before the document is exhibited to any one but the court. But that the process of subpoena duces tecum is a convenient, efficient, and proper method for bringing the paper into court is beyond dispute in this circuit. Bischoffsheim v. Brown, 29 F. 341. The fundamental difficulty with the complainant's argument arises from an apparent misconception of the precise point raised under the subpoena; a misconception no doubt promoted and encouraged by the singular persistency with which the defendant's counsel have sought to obtain not merely the document itself, but permission to have a copy of it made for their own use.

The subpoena (so far as the present objection is concerned) is specific. In this respect the case at bar differs from those cited by complainant's counsel. The defendant is not ...