Window Glass Mach Co. v. Brookville Glass & Tile Co.

• Decision Date: 09 February 1916
• Docket Number: 63.
• Citation: 229 F. 833
• Parties: WINDOW GLASS MACH. CO. et al. v. BROOKVILLE GLASS & TILE CO.
• Court: U.S. District Court — Western District of Pennsylvania

229 F. 833

WINDOW GLASS MACH. CO. et al. v. BROOKVILLE GLASS & TILE CO.

No. 63.

United States District Court, W.D. Pennsylvania.

February 9, 1916

Bakewell & Byrnes, of Pittsburgh, Pa., for complainants.

W. G Doolittle and Kay, Totten & Powell, all of Pittsburgh, Pa for respondent.

ORR District Judge.

This matter involves questions arising under equity rule 58 (198 F. xxxiv, 115 C.C.A. xxxiv) relating to discovery. Both the plaintiffs and the defendant have filed interrogatories, to be answered by opposite parties, respectively. The interrogatories propounded by the plaintiffs to the defendant were answered by the defendant before the matter was brought to the attention of the court. The plaintiffs have filed what they term are objections to the answers of the defendant. The plaintiffs have not answered the defendant's interrogatories, and have filed objections thereto. No order of court has yet been made upon either party with respect to requiring answers to the interrogatories of the opposite party, or with respect to any of the objections filed by either.

We take up first the answers of the defendant to the plaintiffs' interrogatories and the objections thereto. Inasmuch as the defendant has undertaken to answer the plaintiffs' interrogatories, it is not necessary for the court to determine whether the plaintiffs' interrogatories are in proper form, for the reason that, if the defendant is satisfied to answer the interrogatories which may be improper, he cannot afterwards be heard to say that such interrogatories ought not to have been propounded.

Plaintiffs' bill charges the defendant with an infringement of 16 patents, in which there are 156 claims. The patents all relate to apparatus and methods for the manufacturing of glass articles. The defendant denies the validity of plaintiffs' patents in view of prior disclosures, and denies infringement of plaintiffs' patents, and avers that it is operating under 6 patents granted to Robert L Frink, and gives the numbers of such patents. The interrogatories filed by the plaintiffs are directed to the apparatus and methods used by the defendant, at the time of and prior to the filing of the bill. It is unnecessary to set them forth at length, because they are 25 in number and they all direct the attention of the defendant to the Frink patents, and to whether there have been variations therefrom, and conclude with the twenty-fifth interrogatory, as follows:

'Is it not a fact that all the Frink patents referred to in the answer show the entire apparatus used by the defendant in drawing cylinders, lowering them on the horses, and cracking them off? If not, please furnish assembly drawings showing the entire apparatus and the relation of the different portions thereof, including the blower's station or pulpit, the take-down device and the horses, and the relation of the said blower's station to the drawing machines.'

The defendant, by answers filed, as we have stated, without an order requiring answers, produced 'assembled and detailed drawings showing apparatus employed by it, at the time of and prior to the filing of the bill. ' It goes further to give 'all the information it is believed is called for by said interrogatories. ' It does not answer each of the interrogatories filed by the plaintiffs separately, as it should have done in the case of proper interrogatories properly approved by the court before answers filed. The plaintiffs have raised no question about the improper way in which the defendant has answered, except that they are incomplete and unresponsive in the following particulars:

'All plaintiffs' interrogatories were stated to relate to the apparatus and method used at the time prior to, and at the time of filing the bill of complaint herein. Defendant's answers do not state whether the apparatus shown and described in its answers are the apparatus then used. It is therefore requested that the defendant be required to state whether or not its drawings and statements correctly apply to the machine and method used at that time.'

It will be observed that the foregoing objection was unwittingly filed, because it appears the answers of the defendant expressly refer to the time at and prior to the filing of the bill. There follow 15 other specifications of objection, which are all interrogatories. That they are interrogatories, and not objections, may appear from the notice attached thereto, and which was served upon defendant's counsel, which is a notice that the plaintiff 'shall present additional interrogatories as per copy attached hereto, the purpose of these being to make clear certain points which are not made clear by the drawings and descriptions furnished. ' These additional interrogatories relate generally to specific parts of the apparatus or specific steps in the method. One, for instance, the second, contains the statement:

'The drawings supplied by defendant apparently show that there was a cross-head centrally pivoted, etc. * * * Is this correct?'

The court is of the opinion that the objections to the defendant's answers are not well taken, and should be overruled in so far as they are objections, and in so far as they are further interrogatories to be answered by the defendant this court is of the opinion that an answer should not be required thereto. We have arrived at this conclusion because it appears that the defendant has fully intended to disclose the apparatus and methods used by it at and prior to the time of the filing of the bill, at its plant for the manufacture of window glass at Brookville, in this district. It does not appear that the plaintiffs have made a request, or that hindrances were thrown in their way, or concealment by the defendant, or deception anticipated.

Rule 58 was not intended to be used to impose unreasonable burdens upon parties, or to require of parties opinions either as to the reading of drawings or as to the functions of particular parts of the machinery. It provides 'for the discovery by the opposite party or parties, of facts and documents material to the support or defense of the cause. ' Plainly it is intended to aid a party in making out his case, where the ascertainment of facts in support or defense of the cause is difficult. We have used the word 'difficult,' because we have recognized that there is a line of cases holding to the doctrine that discovery will not be permitted if the facts can be otherwise procured. We do not believe that that is a correct expression of the law, because a party should not be put to unnecessary labor or difficulty in making out his case. Yet he should not impose a burden upon the opposite party in requiring the latter to make discovery, if the knowledge of the facts can be procured otherwise with ease. Knowledge of the apparatus and method of the opposite party can be procured with ease by inspection. If there be identity of the plaintiffs' and defendant's apparatus and methods, such identity can be easily ascertained, and be the subject of parol testimony by those who have...