JOHNSON STEEL STREET·BAIL 00. fJ. NOR'.l'R BRANCH STEEL 00.

191

JOHNSON STEEL STREET-RAIL

Co.

ft. NORm BRAiliCR STEEL

Co.

(Circutt' Oourt, W. D. Pen'l't81l1JVan1a. November 12, 18111.)

1.

Wben, under 'the 67th rule in equity, a court has appointed a special examiner to take testimony 'in another district, a subpama duces tecum may issue from the q1erj{',aoffice of the latter district in the usual way,without a direct order of court, and 'the court of'that district has power to punish a disobedience thereof. Rev. St. U. H. 5869, requiring an order of court for tbe iBBuance of,such a subpcena, does not apPly, atttt. is restricted to the taking ofdepositions de bene essc> or in pf!TPetuam rel and, under a ded1.mUll potestatem, according to the proviSIons of sections and certain drawings, must be obeyed, although the papers relate to a valuable secret method of pl'Oducing a manufactured a r t i c l e . ' "
III a suitfor, iIiffinlring a patent upon steel rails, where the defense is want of in.
OP THB EVXDBNOB-SUIT POR INPRINGBII1IN'J' OP PATBNT.

])vORS TEOOM-SPEOIAL, EnmNBR8.

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2. BAHE-DISCWBURE8 APPEOTING PRIVATB BU8INEss. Asubpalna duces tecum, requiring a witness not a party to the suit to produce

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vention,in viewoftlle prior state of the art; and that rails of the kind patented were in public use more than two years before the application, and it appears that rails of that general character were manufactured by a certain company for several years prior thereto, it is prima/acle material to inquire into the exact shape of Bl,lCb rails, and, a ,ubpama Wuce, tecum will issue to compel the production Of,drawings de8criptive thereof. '
A ,'ubpama tecum can only be used to require the production of docu. ments, aDd a' piece of metal in 'the nature of a form or model is not the Bubject thereof. ' '
Waf.T, APPLIOABLE-MoDELS-FoRHS.

.. &ul:E-To

In Equity. Bill by tbe, Johnson Steel Street·Rail Company against the North Branch Steel Company for infringement of a patent. Heard upon a rule for attachment of John Fulton for contempt in refusing to obeyatmbpwna ducestecwm. John ,R. Bcnneu, for rule. Ceo. J. Harding and P. C. Knox, opposed.

REED,J. A bill in equity for infringement of certain letters patent having been filed ill the circuit court for the eastern district of vania, and the defendant having answered, Samuel Bell, Esq., wasappointed by that court as a special examiner, upon tbe application of the defendant, to take testimony in this district. John Fulton, whods-the general ,manager of the Cambria Iron Company, a corporation, not a party to the suit, was duly sewed with a subpama duces tecum,directing him to produce at tbe hearing before tbe examiner certain drawings and templates. Mr. Fulton,refused to produce them, although appearing at the hearing in person in obedience to tbe subpoona. 'Upon the argument of the rule taken by the delendant's counsel to show cause why an attachment for contempt should not issue, counsel for Mr. Fulton appeared, and tbe sevetalpositions taken in opposition to the rule will be con", , , It was argued that the 8ubpoona had improperly issued from the clerk's office; tbata subpwna duces tecwm, in sucb a case as tbe present, could onlyqeissued by order of coun,uponpetition or application of one of the parties. A circuit coullt. in one district hlllJ power, under the 67th.

192

:

nDERAL REPORTER,

vol. 48.

rule in equity, to appoint a special examiner to take testimony in anoth 'districtt 1r Cq. v. Dr,w, 3 Woods, 691; In reSteward, 29 Fed. Rep. 813;) and the court in the latter district has power to issue a subprena commanding a person living in its district to appear and testify before an examiner or master who has been appointed by the court and .who 'is discharging the'dutiesof his appointof ,the former ment in the latter district; ,and such court also has power,under the 78th rulain equity,to punish 8uchpersonfor refusihg to obey such subPQlnB, (In re Steward, supra.) Nor do I think it necessary that, in such a'case,an application m,adeto the latter court for an order directing the 8ubpmnct dudes tecum to issue, but such a subprena may issue in the usual manner from the clerlr'soffice, as in ordinary CMeS.
;cIf documents, the productJon otwhiclt is desired, are in the possession of one not a party to the suit, he may be'compelled by a subpama duces tecum to, produce theIn, and it the is not obeyed he will be punished for contempt, on proof by that the are in his custody." S <h:eenl.Ev. § S05. , '

'And such a subprena is:in ordinary and general use, and is of compulsol'Y"obligation arid in 'courts of law, (Amey v; Long, 9 East, 473; Russell v. McLellan, 3 Woodb-. & M. 157,) and also in courts of equity, (1 Daniell's Ch. Pr.'906i u. S. v. Babcock, 3 'and, by the 78th rule in equity, subprerias may be issued by the Clerk in blank, and filled up by the commissioner, master, or examiner, requiring the attendllnceof the witness"alHhe time and place specified, and this apduces tecum. 8ection869 of the Revised Statplies as well utes., providing fpr an order of 06Ul'.t, .upon which the subprena duces tecum shall issue, applies to cases where depositions de bene eiscare-taken under the provisions of section 863, or in perpetuam rei memoriam and' under a dedimus potestatem, under section 866. Ex parte :Fislc,;l13 U. S. 713, 5 Sup. Ct. Rep. 724. It does 110t apply to testimony taken, as in the pr:eseat case;; under the genexalpowers 'of a court of.equi'ty, and in the mode prescribed by the equity rules. An examination of the act of ,24,1827, (4 8t. at ,Large,. 197 ,) the second section ofwhich was section 869 of the Revised Statutes, shows, that it was not to a.pply to all cases. 'l'he subprenahaving properly issued, the remaining question is as to the validity of the reasons given in support of the refusal of the witness to pbl3ythesubprena. The affidav,it,of Cyrus Elder, Esq., attorney for the CaD;lbria Iron Company, which', ,it was understood: at the argument, sho,uld be treated as though it were the answer of Mr, Fulton, says that he instructed the witness not to produce the articles icalled for' by the subpoona, and his i.nstructions were intended· solely to' prevent, the disclosure of.valuable ofSaid Cambria,Iro,n'Company, and that the disclosures of the witnesses called for, and which the witnesses were required to answer and produce; related to a: Itlethod of manufacturing a rail, which method has been, developed by, the Cambria hon Company with great labor 'and expense, and, that itt said company's private property. In the case of Bull v.;Lovela'l1.d, lO,Pick. 9,

JOHNSON STEEL STREET-RA1L CO.

11.

NORTH

STEEL CO.

193'

the supreme court of Massachusetts discussed tbequestion, and held tha.t the witness was bound to answer a question pertinent to the issue, where his answer will not expose him to criminal proceedings, or tend to subject himto a penalty or fc>rfeiture, although it may otherwise adversely affect his pecuniary interests, and said: .. There seems to' be no difference in principle between compelling a witness to produce 'a document in his possession. under a subpama duces tecum, in a case where the party calling the witness has' aright to the lise of such document, and compelling him to give testimony when the facts lie in his own knowledge. It has been decided, though it was formerly doubted, that a 8ubpamlt duces tecum is a writ of compulsory obligation. which the court has power to issue, and which the witness is bound to obey, and which will' be enforced by proper process to compel the productiollof the paper. when the witness has no lawful or reasonap)e excuse for withholding it, (Amey v. Long, 9 East, 473; OOTsen v. Dubois, IHoIt, N. P. 239;) but of such lawful or reasonable excuse the court at nisi p1;ius, and not the witness, is the ·udge." , J, , ' In BfLird, v. (Jochran,4 Serg. & R. 398, the supreme court of Pennsylvania. held that a witness in a civil suit may be compelled to give' evidepce which may affect his interest, provided it does not teqdto convictbim of a crime, or subject him to a penalty, £laying: "With everyman may be compelled,'ona bill filed him in equity, to decline the truth. although it affect his interest. Why, tJ1en. should, he not be compelled at law, except where he is a party to the suit? [Parties could not then Under the laws of Pennsylvania teRtify or be called to testify.] The court in which he is examined will take care to protect him frolI\,questions put through impertinent curiosity, and confine hia evidence to those pqints which are really lDaterial tc? the question in IitigaSo far. his neighbor has an interest in his testimony, andnofurther ought he to beguestioned. " ' ',', ' , ," .' " '. ' In J!/:l; parte Judson, 3 Blatchf. 89, the witness ,objected to testifying, for the,reason that the :suit was an amicable and fictitious suit, got up to enable thepartiea to exaI»ine the witness, t<l obtain evidence from him to be used, not itl thatsQit, but in other cases, then pending, in which the witness .was interested, and in which such evidence might be. used to his prejudice; but the COl,ut held that the evidence might be material, that it was bound to assume that the case which, as in this case, was pendingiIl another court, must be presumed to be genuine litigatioh,and that the witness must answer. In Wertheim v. Railway, etc., Co., 15 Fed., Rep. 716, Judge held.that a corporation, not a party to the suit, might be compelled to produce its books and papers in evidence, which might be necessary and vital to the rights of litigants, and that considerations of inconvenience must give way to the paramount rights of parties to the litigation. It was further contended by counsel for the witness that the articles called for by the subprena were not such as could be the subject of a subprena duces tecum. The subprena required the production of certain drawings and templates. A template, as stated upon the argument, is 8 piece of sheet iron, the contour of which corresponds to the opening between the rolls. It was held in the Case of Shephard, 3 v.48F.no.3-13

194

FEDEB4LREPORTER,

vol. 48.

Fed. Rep. 12, that a tecum can used to compel the .production of writteninatrumentlil, papers, hooks, or documents, and that patterns for' stove Cllstings were not the subject of such a writ. I think that the be enforced as to the templates. A document, however, is defined asI ' An instrument upon is recorded. by mf'ans of letters, figures, or marks, matter which rna>' evidentially be used. In.thls Bense the term applies to writings; to words printed. lithographed. or photogr"phed; to seals, plates, or /ltones on which inscriptions are cut or engraved; to photographs and pictures; ,to maps plans. ,Sp far.as concerns admissibility. it makes. DO difference·what is the thing on the words or signs offered may be recorded.: They may be on stones, or gems. or on wood, as well as on paper or parchment." 1 Whart. Ev., § 614. ,

So fit as material, thim,'the drawings called for by the subpcena sho,uld produced. and the' final questionisl1ow far they are material. ' . ,' , The bi1l)n this case is based upon an allegatioll of infringement of a patent gra,lited March. 29'; Defense that the patent is void for insufficiency of invention, in view ofthe prior state of the art, and alsotb'at ,the invention claimed has been ftlpublic use for more than two years prior to th'e' date of the applicl1tion, which was made August It appears in testimony that rails of the general character of covere<iby the patent in controversy were rolled by the Cambrla,;;!;r9n Company, under an arrangement with the plaintiff company,:for'thelatter company, in 1882, and from that time down to the date of the patent; It would, seem to be material and pertinent, therefore,tothe issue, to inquire into this matter, and the defendant is entitled to the production of such drawings as will show the form of rolls used for that purpose, down to the date of the patent. The form of rolls used since has ,not been shown to be material to the issue. My conclusion upon this subject based upon the -presentation of the case by counsel. upon only apart of the testimony, and is not intended to, in any manner, anticipate 01" influence the decision by the circuit court for the easterndistrlct of the materiality or relevancy of the testimony, of which it alone must finally judge. ' When the witness produces the drawings called'for by the i1ubpcena, in accordance with this opinion, and· pays the costs of this application, the rule will be· discharged, it appearing that no disobedience of the 8ubpcena was intended; but this mode was taken by counsel' to test the questions

is

JOHNSON STEEL STREET-oRAIL CO. ,.

BRANCH STEEL CO.

195

JOHNSON STEEL STREET-oRAIL

Co.

'11. NORTH BRANCH STEgL CO.

(Circuit OoUA't, W. D. Penn81ll.van1.a·. .No:veIllber;. 19, 1891.)
Wl'}'NESS-BUBPCBNA DUCES TECUM.

The president of a corporation which is a equity may be compelled, bYlfUbpama duceii tecum, to produce drawIngs of the compally material to the issue. .' "

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Sur Rule for Attachment of A. J. Moxham. John R. Bennett, for rule. Gecrge I. Harding and P. C·.KnO'.t, opposed.
REED, J. The difference between this rule and· that in the of John Fulton, (48 Fed. Rep. 191,) is that Mr. Moxham is the president of the plaintiff company, as well as the patentee named in the patent in suit, and the drawings and templates called for by the BUbpcena duces t6cwm. are those in the possession of Mr. ;M;oxham, or of the plaintiff COJI:l,pany. The general rule seems to be settled that a party to the suit, or the officer ofa corporation party, may be subpamaed to bring such documents as are material to the issue. In Murray v. El8ton, 23 N.J. Eq. 212, it is saio that a party to a suit can be compelled by a subprena. duces tecum to produce papers and documents to be used on the trial as evidence, the court saying that, on general considerations of expediency and policy, it is diflicultto perceive why documents and books whose production would elucidate the issues involved in the suit should be more guarded or inaccessible in the hands of parties than in the custody of others, but that the statute of New Jersey making parties competent witnesses put the matter beyond doubt. In BischojJ8heim v. Brown, 29 Fed. Rep. 343, the court said: "Parties to 8ults in equity, as well as in suits at ]aw, are now competent witnesses in the courts of the United States, by statute, and may now be examined I&t the instance of their adversary. As a witness a party can be compelled, by a 8ubprena duces tecum, to produce books, documents, and papers in IJis possession, the same as any other witness. Merchants' Nat. Bank v. State Nat. Bank, 8 Cliff. 201. He is bound to obey the writ, and be ready to produce the papers in obetlience to the summons." In the case of Edison Electric Light Co. v. U. 8. Electric LightinfJ Co., 44 Fed. Rep. 294, and 45 Fed. Rep. 55, Judge LACOMBE required the production of documents by the officers of the corporation plaintiff, upon a sulYpama duces tecum. In Wertheim v. Railway, etc., ('..0., 15 Fed. Rep. 716, the court held that the officers of a corporation might be compelled, by a subpcena duces tecum, to produce books and documents of the corporation, material to the issue. For the reasons set forth in the opinion in the matter of rule upon John Fulton, the witness must, in my judgment, produce before thp, examiner all drawings, in his possession or that of the plaintiff company, of rolls used in the manufacture of rails by or for the plaintiff, or the witnes9, as called for by the subprena, down to the date of the patent in suit. When this is done, and the costs of this application are paid, the rule will be discharged.