Reflectolyte Co. v. Edwin F. Guth Co.
| Decision Date | 11 October 1927 |
| Docket Number | No. 7753.,7753. |
| Parties | REFLECTOLYTE CO. v. EDWIN F. GUTH CO. |
| Court | U.S. District Court — Eastern District of Missouri |
Paul Bakewell, of St. Louis, Mo., and Wells S. Church, for plaintiff.
Harry Lea Dodson and Zell G. Roe, both of New York City, for defendant.
This is the conventional action for an accounting and an injunction, bottomed upon the alleged infringement of a patent numbered 1,455,375, owned by plaintiff, and issued to Harry C. Adam on the 15th of March, 1923. Plaintiff holds by virtue of an assignment to it from said patentee. The application for the patent herein was filed August 30, 1920. The answer, in so far as it is pertinent in this discussion, denied the infringement charged and averred the invalidity of plaintiff's patent by reason of the prior art. In limine, a certain matter touching the defenses specifically pleaded, and certain depositions bearing thereon, deserve some attention.
The suit was filed by plaintiff on January 29, 1927; by stipulation, the time within which defendant should answer was extended until March 17, 1927, on which day the answer was filed, and the case became at issue. The case was set down for trial on the merits on May 18, 1927, at which time defendant appeared by its counsel and asked, and was granted leave, to amend its answer by setting up a prior manufacture and use of a light globe alleged to be similar to that of plaintiff. This application for postponement was accompanied by an affidavit of counsel for defendant, to the effect that such use of such prior alleged anticipating structure first came to the knowledge of the affiant on May 16, 1927, and a request was made by defendant to postpone the hearing of the case on the merits until June 20, 1927, in order that depositions might be taken as to the defense set up by the amendment. This motion for postponement was granted, and the case reset for June 20, 1927.
In the period between May 18, 1927, and June 20, 1927, defendant gave notice to plaintiff of its intention "to take the depositions de bene esse of C. J. Renner, L. Buscko, and others, of whom due notice will be given on the record, all of whom reside more than 100 miles from the place where the trial of this action will occur." The place of the taking of these depositions was set out in the notice as "the office of the Phœnix Glass Company, in said city of Rochester, Pennsylvania."
The depositions were actually taken before the person and on the day named in the notice, and at the office of the Phœnix Glass Company, at Monaca, Pa., and not at Rochester, Pa. Counsel for plaintiff, however, personally appeared at the time and place whereat the depositions were taken, and objected to the taking thereof for the reasons (a) that defendant had not applied for or obtained authority of the trial court to take the depositions; (b) that the names of the witnesses, whose depositions are to be taken, are not set out in the answer, or in the amendment thereto, made on May 18, 1927; and (c) that such amendment does not set up any defense.
Counsel for plaintiff agreed, "without waiving the objections already spread upon the record," that the depositions might be taken down by the stenographer, who was also a notary public, and transcribed by her, if she would furnish counsel for plaintiff with a carbon copy of such depositions, and that the signatures of the witnesses should be waived. Plaintiff's counsel, as forecast, appeared and was present when the depositions were taken, but beyond the acts already mentioned, and beyond objecting to many, if not all, of the questions propounded to the several witnesses examined by defendant, took no other part. Counsel for plaintiff refused to cross-examine, but stood upon his objections, which he bottomed, largely, if not wholly, upon the provisions of equity rule 47.
I am of the opinion that the depositions are competent and admissible, and that the motion to suppress them, which was taken with the case, should be overruled. Rule 47 expressly provides, inter alia, that depositions may be taken by either party "when allowed by statute." There are contingencies, under rule 47, wherein application must be made to the court for leave to take depositions, and a showing of good reasons must be made; but this is not a case wherein the exceptions are applicable. Here not only did defendant have, under rule 47, 30 days after May 17, 1927, within which to take depositions, but it had the right to take them because of a statute (section 863, R. S.; 28 USCA § 639). Since, pursuant to the Act of March 9, 1892 (Comp. St. § 1476; 28 USCA § 643), depositions may be taken under state statutes and procedure, and since the latter do not require the names of the witnesses to be set out in the notice, it was not necessary to set them out in the notice here.
The provisions of rule 47 are in aid of the federal statutes, and not in derogation thereof. On this point the effect of rule 47, and other rules which are germane, was to change the practice as to testimony on the trial on the merits of equity actions. Theretofore an equity case was usually heard on the merits on depositions taken before examiners appointed by the court. The oral examination of a witness in open court on final hearing in an equity case was, before the adoption of the present rules in equity, the exception and not the rule or practice. This practice then applied to witnesses, whether they were within or without the provisions of section 863, Revised Statutes.
But I think the rule itself is in this case a warrant for the taking of the depositions to which objections were made, for the reason that they were taken within the period of 30 days allowed to defendant for that purpose by rule 47. As to the form of the notice and the lack of a specific and formal order in the record for their taking, I conclude that by fairly plain statutes and apposite decisions, these depositions were properly taken. Section 863, R. S.; Act Aug. 15,...
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