EDISON ELECTRIC

LIGHTING CO.

Nor is there any evidence thnt'would i warrant me in finding approximately what part, if any, of defendant's 'giUns, due to the use of the in": fringing device,would have been realized by the plaintiff but for the fringement. Any effort in that direction would necessarily fail for want of sufficient data to base a finding on which I could rest with, any contiqence its accuracy. It, was suggested during the trial that pllJ,intiff was entitled to rec<;Jver the ,market value of the use of the invention, and that the advantage that defendant was shown to have realized might be taken as establishing ,the market value of such use. With reference to thissuggesHon, it is sufficient to say that I know of no instance in which, in 11 suit ,ll-t law, a patentee may recpver as damages of the nse of ' his invention, except in those cases where, by the mode of enjdyment of the m(imopoly, the patentee himself established value, by granting the use of the invention to the,,public fo1;' prescribeg royalties orlicense fees; Rude v. Westcott, Btlpra.Thisjsnot such a case, and besides '1 should not leel disposed, in a ease' onhis character, to determine the general market value of theuse of 8,n'invention'sol-elyupon an opinion expressed by ,patentef( 8S to the effected by the use of the same. , ",:" ;" ,',;";'<,'; As ,'the ease. sU,mds, ,th,erefore" the, pJaintiff" ,apparently bY,his',I\egleet, has allowed the time to expire 'within ",hieli ne' 'could! have'thaintained SU!t in equity,an4hadan, ,1>Y the appears toha"e been flllly aware of ment for the, suit w8sfil¢d,'and 'in the pis patent expired, which necessitated s' sui(atJltw., In that fl;lfUtn the rule 'is to award compensation for actual10sBes, a.nd the actual'loss is not A judgment must accordingly be entered (or nominal damages',which the court assesses in the sum of six centRo . " ..

,

EDISON ELE<!1'RIC LIGHT Co. t1. UNITED STA'rES. ELECTRIC LIGRTINGCo.

(OiraUA.t

coUrt, S.D. New

5,18?L.>

COMMUNIQATlbN8, .

1.

,

PAT)!:NTS l"Oll

.

8.

9. SAME..-l'RODl1QTIQN Oll'P,APJliB/l-SU!'pqlNA TEcuM. ' .' '. ' Defendant, in ap. intnrigement of a,patent, claimed that compiainant, in a divisional aPll1ication 'uponwhtch letters pQtent were bevel' issued,made admission s which greatly restrict tbe claim of the ratent in suit, and, a foundation . . .. for I;lecondary evidence being laid, sougbt to compe oompl.alnanttobringinto Court a coPy tbereof, wliicl:dvas ia its posse&llion. , that; a 8ubp(l'lna d.uces' tecum W6s'\.he,proper methQd wbel) the paperwaddentified QY allP·ecifio dEl!lCriptioll. '

Rev.St. U. all,applicatiohs.fbrpatents to be filed intbe patent-ofliQe declares that "all applicatIons' interfermgwith OOiVeat8" shall bedeposited in tbe confidential arcbives, and ,lllakes them: privileged, and amounts to,a;n implted.declaration j;bat all otbllr appllcations.sball not be privileged.

.'

catiitg'oh'anges tor,subsequent amendments, whichw8re tbe 'results of colnmun1eatiOD. between counsel and client, did not render the paper privilllged

flWli tpat tpo copy 'hail UPOJ1 it vafious memoranda notIn the origi'tlal; Iudi-

l'AEBa---PmvIJ,ojlGED 'Cor.niaNI(:ATIONS·. ·

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..

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56
4:.

DDERAL REPORTER,

vol. 45.

plainant itself had oommunioated It to the patent-omoe, thus rendering it no longer a oommunioation solely between attorney and olient.
SAlliE.

Thefaot that the paper oontained admissions restrioting the olaims of oomplainant's patent does not make it evidence by whioh he may support his oase. and therefore excuse him from disolosing it, but, on the contrary, shows it to be evidenoe tending to impeach or destroy his case, and whioh he maybe compelled to disclose. When a party inspeots a document which he has compelled his adversary to produce by 8ubpama duces tecum, and afterwardlil faillil to offer it, hilil adversary may put it in evi"dence.

S. PRACTICE-FAILl:RE TO OFFER PAPER PRODUCED-INTRODUCTION BY ADVERSARY.

In Equity. After the former hearing (see 44 Fed. Rep. 294) the following addi. tional memorandum was filed by LACOMBE, J.:
"The documents called for by the subprenas have now been brought into court. Tn 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 anyone of them is called for by the defendant, if objection to its exhiby counsel for complainant, the examiner will certify the objecbition tion to the court and send therewith the document itself. Thereupon the court wlll rule upon the objection."

The case now comes up for hearing upon an objection certified by the examiner. a. A. Seward and Groff1JentYI' Lrwery, for complainant.
(1) The case does not require or justify enforced disclosures of private papers. Storey v. Lennox, 1 Keen, 349, 350: Bischojfsheim v. B1'own, 24 Blatchf. 174. 29 Fed. Rep. 341 : Bisp. Eq. (4th Ed.) §§ 559, 561; Mariev. (Jal'rison, Daily Reg. April 25, 1884; 2 Daniell, Ch. Pro p. 1818; Whart. Ev. § 754; Bolton V. Liverpool, 1 Mylne & K. 88: Pom. Eq. Jur. § 201; Peile, Disc. 33-41; Benbow v. Low, 16 Ch. Div. 93; Hoyt v. Bank, 1 Duer, 656. (2) Sufficient grounds have not been laid to entitle defendant to inspection. Leggett v. Postley, 2 Paige, 599; Scott V. Walker. 2 El. & Bl. 562; Boyd V. U. S., 116 U. S. 616,6 Sup. Ct. Rep. 524; Oonsins V. Smith, 13 Ves. 542: Wadeer v. East India 00.,35 Eng. Law & Eq. 2i33; Wallis V. Duke of Port, land, 3 Ves. 494. . (3) Discovery would be contrary to public policy. Wadeer v.East India 00.,35 Eng. Law & Eq. 283; Cooley, Const. Lim. (6th Ed.) p. 371; U. IS. V. Oommissioner of Patents, Sup. Ct. D. C. June 23, 1890, (MS.) (4) Inspection of one document will make the entire series evidence. Jordan V. Wilkins, 2 Wash. C. C. 482; Wallar V. Stewart, 4 Cranch, C. C. 532; Lawrence V. Van Horne, 1 Caines, 285; 1 Thomp. Trials, § 829; 1 Whart. Ev. § 156; Steph. Dig. Ev. Notes, Tayl. Ev. S 1614: ?alvert V. Flower, 7 Car. &. P. 886: Wtlson v. Bowte, 1 Car. & P. 8: Rwhards V. Franku.m,9 Car. &:; P. 221; Boom Oorp. v. Lamson, 16 Me. 224; Randel V. Canal 00., 1 Har. (Del.) 233: Ellison v. Oruser, 4O N. J. Law, 444, 445; Oom. V. Da'cidson, 1 Cush. 45: Pennell v. Meyer, 8 Car. &; P. 470. E. Wetmore and S. A. Duncan, for defendant, cited: 3 Gre.enl. Ev. § 293: Whart. Ev. S 954; (Jiant Powder 00. v. Oalifornia Vigorit Powde1' 00., 4 Fed. Rep. '720; Ohicago v. Sheldon, 9 Wall. 50: Rev. St. U. S. §§ 858, 892; Startie, Ev. (9th Ed.) 113; Mitchell's Oase, 12 Abb.Pr; 249; Blea86 v. (Ja1'lington, 92 U. S. 1; Bischojfsheim. v. Brown, 29 Fed. Rep. 341.

EDISON ELECTRIC LIGHT CO. 'lI. UNITEDBTATES ELECTRIC LIGHTING CO.

51,

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 evidenctl if de· fendant be so advised, the full text of the divisional application made by Thomas A. Edison, December 15, 1880. being one of the papers covered by the 8Ubpcena ducea tecum heretofore served upon the officers of the company. The paper being placed in the examiner's hands, com· plainant's counsel object to its being handed to or inspected by defendant's coun8el, 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 divisional application, but it has been proved to be a is not the copy thereof by complainant's own witness, and is competent as second· ary evidence if the case would warrant the production and admission of the original. The copy bears various pencil memoranda, apparently not on the original, indicating changes for subsequent amendments. They were made by counsel l1nd 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. In. <l.smuch, 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 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 oome 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 anyone but the court. But that the process of ducea tecum is a convenient, efficient, and proper method for bringing the paper into court is beyond dispute in this circuit. Bi8choffsheim v. Brown, 29 Fed. Rep. 341. The fundamental difficulty with the complainant's argument arises from an apparent misconception of the precise point raised under the subprena; a misconception no doubt promoted and encouraged by the singular persistency with whicl?- 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.

58

nDEI,Ur., RJl}I!ORTER,

vol. 45.

The subprena(so far as the present objection is concerned) is specific. In this respect the case at bar differs Jrom those cited by complainant's sel. The defendant is not "claiming the right to a general inquisitorial examination of all the books, papers, and documents of his adversary t with the view to ascertain if perchance something may be found which. will possibly nidit;" nor is it asking "before the hearing to pry into the case of its adversary," nor "to see in advance of the trial evidence which the other side are going to produce," nor "calling upon its adversary to exhibit for inspection anything and everything in writing under the latter"scontrol,which may assist the defendant," nor is this an "unnecessary inquisition into the contents of private papers by one who has no interest in them." No "complete disclosure of everything the complainant knows, or believes in relation to the matter in question" is sought for, nor is this a" general fishing excursion." A particular document, whose existence is well known to both parties, and in fact to the general publicj is specifically called for. It is described with a fullness (by date, description, and serial number) which leaves no doubt as to its identity. No doubt it is in the complainant's possession, but the authorities do not go to the length of holding that the mere circumstance of possession by his adversary.will preclude a party from bringing into court and putting in evidence a document which may damage that adversary's case. but which he is able himself to identify and call for without invoking the aid· of his adversary's conscience by means of a bill of discovery. Nor, if the document called· for contains what the defendant insists it does, would it be any part of his adversary's case, nor within the rule as to title-deeds laid down in some of the cases cited. It would be a separate document, containing admissions material to defendant's case. "A party can be compelled to disclose all facts which would, by way of evidence, tend to impeach or destroy his case, unless otherwise privileged, since such facts are material evidence for his adversary, but is not bound to disclose any evidence by which he intends to or may support his case, for such evidence cannot be materlal to [his adversary.]" Pom. Eq. Jur. § 201. The objection that the application is privileged upon grounds of public policy. because it is an application pending in the patent-office, was considered when this case was up.on the motion to compel obedience to the subprena. The opinion of the supreme court of the District ofColumbia was at that time before the court, and also the quotation from Cooley's Constitutional Limitations, as to communications made to a telegraph operator. The latter citation refers to a case not analogous to this, for surely no one contends that a party who has sent a telegraphic message may not in a proper case be himself interrogated as to its contents, and required to produce a copy, if he has one, although the operator .may not be allowed to disclose it. To the memorandum filed upon the de,. cision of the prior motion there is to add. Regulations as to what classes of quasi public documents shall or shall not be privileged may appropriately be made by the legislative branch of the government, which passes the statutes, under the operation of which those very doc-

EDISON ELECTRIC LIGHT CO. 11. UNITED STATES ELECTRIC LIGHTING CO.

59

uments are created. Whether, whfln it has failed to make any such provisions, it may be desirable for the courtei'to do so is not the question presented here, because in this case there has been no such failure. Congress, in the very statute which required inventors: to file applications in the patent-office, expressly provided that all applications interfering with caveats should be deposited in the confidential archives, and be therefore privileged. Rev. St. § 4902. If aU applications were thus privileged, this provision would hav.e been unnecessary, and the fact of its eoactmen.t seems to indicate quite clearly that congress, having the whole subject under advisement, determined that it would extend the to the particular class of applications therein specified, and; inferentially, only to them. The subject having been thus regulated, and the question of "public policy" determined by those to whom such regulation and determination more appropriately belong, further investigation thereof by the courts seems to be uncalled for. The objection to the materialitt of the document called for was considered generally on the former motion. It has now been inspected by the court, and as the result of such inspection it is enough to say that it is sufficiently germane to the issues raised in this case to warrant its offer in proof,so that it may form part of the record, (either as admitted or excluded evidence,) which is to go. to the supreme court. Blea8e v. Garlington, 92 U. S. 1. If offered, therefore, it will be admitted, but the objection to such admission will be reserved for disposition upon final hearing by the judge, whose familiarity with the whole case will enable him to render an intelligent decision. The defendant is asking for leave to inspect the document before offering it in evidence. As to the effect of the .contention of the complainant is sustained by the authorities. If a party inspect a document produced by, his adver· sary in response to' a subpama duces tecum issued by him, such document may be admitted as evidence for his adversary if he himself declines tQ put it in. Jordan v. Wilkins, 2 Wash. C. C. 482j WaUar v. Stewart, 4 Cranch, C. C. 532. As counsel for both sides seem to be agreed upon the point that exhibition of the fundamental document (the application) carries exhibition of the other papers, viz., the correspondence between the patent-office and the Edison Company, in relation to said application, the Bame disposition will be made as to each one of them when separately called for.

60.

FEDERAL

REPORTER,vol. 45.

THE WEST BROOKJ,yN.1 BROWN et ala

'V.

THE WEST BROOKLYN.

(Dl.st'/i.ct Co'UJrt, 8. D. New York. January 91, 1891.)
COLLISION-CROSSING COURSES-FERB,y-BOAT AND Tua--ENTERING SLIP.

The steam-tug Garrett was lying at pIer 4, lJJast river, heM up stream, and inside of another tug. Receiving nrders for Harlem, she backed down stream 10 get around the stern of the tug lying along-side. At this tilD,e, the ferry-boat West Brooklyn was approaching her slip between piers 2 and 8. She blew two whistles to the tug, anil kept on, supposing that the tug would go ahead in time to avoid her; Through some carelessness on the part of the tug, she did not go ahead, and her stern struck the paddle-wheel of the ferry-boat after the latter was half-way in her llip and when the wheel was motionless. HeZd, that the tug was solely in fault for the collision.

In Admiralty. Suit for damage qy collision. (Ja?'Penter « Mosher, for libelant. Burrill, Zabriskie Burrill, for claimant.

«

BROWN, J. On the 7th day of September, 1889, as the ferry-boat West Brooklyn was entering her slip between piers 2 and 3, East river, the libelant's tug R. S. Garrett, in backing down from pier 4, struck the starboard paddle-wheel of the steamer, and received considerable age, for which the above action was brought. r am satisfied that at the time of the collision the wheels of the ferry-boat were stopped, and that one-half her length was within her slip, and inside the exterior line of pier 3. The tide was slack. The Garrett had been moored with her head up stream, along-side the end of pier 4. Another tug, the Hoyt, with her stern projecting about 30 feet behind the Garrett, and angling outwardS, was moored outside of and along-side the Garrett. Under orders for Harlem, the Garrett cast off and backed down for the purpose Hoyt, and, in doing of getting out into the river, around the stern of so, she ran against the wheel of the West BrOoklyn, as above stated. She was at that time probably from 15 to 30 feet below the line of pier 3. Pier 4 was used as the head-quarters for tugs in that vicinity, and, in their maneuvers in coming in and going out,they had no right unnecessarily to embarrass ferry-boats 'leaving or entering the slip below. There was no need in this case for the Garrett, a slUall tug, easily and quickly handled, to cross the well-known path of the ferry-boat in entering her slip. She evidently paid no attention to the West Brooklyn, which was approaching near her slip, with her lights set, and easily recognizable. I do not imagine that the pilot intended to back into her water. How it happened that he did so is not altogether certain from the evidence, and it is not necessary to rietermine whether it arose from his own failure seasonably to ring ahead, or from the failure of the engineer to respond to the signals, of which there is some direct and very positive evidence. Either leaves the tug alike chargeable with blame.
1 Report

by Edward G. Benedict, Esq., of the New York bar.