Kelly v. Springfield R. Co.

• Decision Date: 14 September 1897
• Docket Number: 4,610.
• Citation: 83 F. 183
• Parties: KELLY et al. v. SPRINGFIELD RY. CO. et al.
• Court: U.S. District Court — Southern District of Ohio

83 F. 183

KELLY et al. v. SPRINGFIELD RY. CO. et al.

No. 4,610.

United States Circuit Court, S.D. Ohio, Western Division.

September 14, 1897

Julian C. Dowell and F. F. Fish, for complainants.

D. W Cooper and Kerr, Curtis & Page, for respondents.

SAGE District Judge.

This is a motion by defendants to include in the taxation of costs the expense of printing defendants' record, $711.33; of printing brief, $389.10; supplemental brief, $31.20 illustrative charts of applications for patents in suit $141.65; of photolithographing paper exhibits, $339; of copies of complainants' testimony, $50.40; of constructing defendants' models and tracks and electrical appliances for operating same, $443; and of copy of opinion, $3.25; total, $2,108.93. All these were, in accordance with the general practice of the court, excluded by the clerk. It is claimed that this case, however, should be excepted from the general practice, by reason of certain stipulations and an order of court. Prior to the hearing, counsel, under a stipulation filed December 5, 1895, took or retained possession of all physical exhibits offered in evidence, for photolithographing or printing.

At the hearing the court allowed counsel for the respective parties, upon their application, time for filing supplemental briefs. Later, by written stipulation, the time was, with the consent of the court, extended still later; that is to say, on the 9th of November, 1896, it was stipulated in writing by and between the solicitors for the respective parties that the printed copy of complainant's proofs on final hearing, and of defendants' record, 'filed herewith,' should 'be considered, for all the purposes of this suit, to be the original depositions taken and exhibits offered on behalf of the respective parties,' and that they together should 'constitute the original record.' This stipulation was filed on the 18th of November, 1896, and on the same day the court made an order, 'upon reading and filing the annexed consent ' (referring to the stipulation), and upon motion of solicitors for defendants, 'that the printed copy of complainant's proofs on final hearing, and of defendants' record, filed herewith, shall be considered, for all the purposes of this suit, to be the original depositions taken and exhibits offered on behalf of the respective parties, and shall together constitute the original record in this suit.'

'For all the purposes of this suit' is comprehensive enough, upon any known rule of interpretation, to include taxation of costs. The clerk, so interpreting, made the taxation in all respects as if upon the original depositions, exhibits, and proofs.

The argument in favor of including in the taxation the costs of printing and lithographing is that the entry above recited, made subsequent to the taking and certification of the record, upon the written consent of the parties, while it did not cancel the typewritten testimony and the exhibits offered, did have the effect to 'merely withdraw' them from the files of the court, excepting that, had a question arisen as to the correctness of the printed copy, recourse might have been had to the original papers, 'then and now in the custody of counsel. ' But the court having, under the circumstances recited in the order, ordered a printed and lithographed copy of the record before it, counsel urge that it follows from the course of decisions that the cost of compliance with the order must be borne by the defeated party. This is very ingeniously put, but it is not sound, for the following reasons: First. The order did not have the effect to withdraw the original copies of the record from the files. As drawn, it closed with a paragraph expressly ordering that the parties might withdraw all the exhibits and depositions; but the court drew erasing lines, striking that paragraph out, as appears on the face of the draft accepted and filed. This court never allows original depositions or paper exhibits to be withdrawn from the files of patent causes, unless there be some imperative reason, and even then only temporarily. If counsel still have original depositions or paper exhibits in this cause in their custody, the court requests that they be returned to the files, for the reason that other parties now or hereafter interested in the matters involved in this litigation may have occasion to inspect and examine them, and to them it may be important to have access to the originals. Sometimes it becomes necessary to permit the permanent withdrawal of paper exhibits, but the condition invariably imposed is that certified copies be taken and left in their stead. Second. The cost of complying with the order was nominal only, if indeed it was anything; for the printing and lithographing were done before the court was moved to make the order, and the printed copies were all filed on the day and date of making the order. Third. Not only were the printing and lithographing not done in consequence or by reason of the order, but they were altogether independent thereof, and were done by the parties upon their own motion, and for their own convenience and that of the court; and the substitution of the printed for the original was by a consent entry, which would be, indeed, a troublesome precedent, if construed in accordance with defendants' motion. The cost of printing briefs is not taxable in this district. As to the supplemental briefs, to construe the granting of leave to file them as an order that the cost of printing them should be taxed in the bill of costs would be contrary to all precedent in this district, and would tend to induce counsel to find frequent occasion for supplemental briefs, and to make them the chief presentation of their cases. The expense of copies of testimony is not taxable as part of the costs in this district, nor is the expense of constructing or procuring models, or of furnishing appliances for operating the same, nor the expense of copy of opinion.

It would seem to be unnecessary to cite authorities in support of the rulings above stated, but inasmuch as the practice is not in all respects uniform in all the circuits, and motions somewhat like the one made in this cause have been heretofore presented to and acted upon by this court, the following citations by counsel for complainants are approved and appended.

The models referred to represent structures regarding which proof was given by defendants, and they were used at the hearing to illustrate and make clear the oral evidence. They are not models of the patented invention in suit, and they were not procured under any order or rule of court. Models are not exemplifications.

Wooster v. Handy (Cir.Ct.S.D.N.Y.; 1885) 23 F. 49.

Exhibits of this kind are not taxable as costs.

Woodruff v. Barney (Cir.Ct.S.D.Ohio; 1862) 1 Bond, 528, 2 Fish.Pat.Cas. 244, Fed.Cas.No. 17,986.

Exhibits of this kind should not be taxed. 'It is obvious that it would subject litigants in contested patent cases to onerous burdens, if either party were permitted, ad libitum, to procure models, and tax his unsuccessful adversary in the case with the entire expense. I am not aware that any of the courts of the United States have given any sanction to such a principle.'

In Hathaway v. Roach (Cir. Ct. D. Mass.; 1846) 2 Woodb.& M. 63, Fed.Cas.No. 6,213, it was held that models of the plaintiff's invention procured by the defendant were properly taxable as costs. Models of other patents were not recognized as taxable. 'If other models are taxed, I do not think them proper items for the bill of costs, any more than other drawings of other patents procured, or the books which describe them; they all being rather arguments, than proof.'

Parker v. Bigler (Cir.Ct....