the back part bent forward at a to form the part,X, and with the plate, D· .securedthereto.:" ' With a distinct concession in the face of the patent that anti-rattlers had theretofore" been made of single plates of steel bent in various forms," it was insisted in argument that the claim of this patent for any feature of novelty must rest upon the introduction of the plate, D, in the mannerand for,th:e purpose indicated, and that this was not invention. On the other hand, after reciting the general averments of the bill in respect , to invention and novelty "admitted by the demurrer to be true," counscUor the ,conwlainants says: "And it,can be shown. if 'theavel'ments of the bill are true, that the improvement ,made hy Blair was both new and useful, and involved invention. This was to the patent-office officials. and they had the Whole older art before them. when they allowed this claim." But counsel ,made no suggestion how it was possible, in the face of the concession in the patent,to show any element of novelty or invention except the plate, D, and the court cannot see, and did not understand counsel to contend, that the introduction of that plate into the claim or combination could in itself be called invention. If it is possible, by specific averments the general allegations found in the bill, to show that there was invention in this device, the bill may be amended for that purpose, but, as it stands, I do not think the defendants should he put to the trouble and expense of making proof. For cases upon demurrer to the bill, in which the courts have looked at the letters patent of which prQfert was made, and have held them invalid their following: Bogar v. Hinw, 25 Fed. Rep. 484; West v. face, see Rae, 33 Fed. Rep. 45; Studebaker Br08. ManuJ'g 0'0. v. IUinbi8, etc., 0'0., 42 Fed. Rep. 52. The demurter is therefore sustained.
EDISON ELECTRIC LIGHT
UNITED STATES ELECTRIC LIGHTING
(Circuit Court, S. D. New Yor1t. October 18,1890.)
PATENTS POR INVENTIONS-AcTION FOR INFRINGEMENT-PRODUCTION OF DOCUMENTS.
Complainant: in an actton for the infringement of a patent made admissions, on an application for another patent on which letters never issued, which defendant contends greatly restrict the. claim of the patent in suit. that complainant could not rehse obedience to a subprena, auces tecum to produce such application, and the correspondence with the patent-office in regard thereto, on the ground that such documents, if produced, wouid be immaterial. as the court will not pass on that question until the evidence is before it.
The fact that the application for the unissued patent and the letters to the patentoffice in regard thereto lire the result of conilult/ltions between complainant and his counsel does not rellder tbem privileged as confidential communications l since they ceased to be confidential when complainant 'and his counsel parted witn exclusive knowledge of t\lei.r contents by sending them to thepatent-office.
EDISON ELECTRIC L. CO. V. UNITED STATES ELECTRIC L. CO. S.
S,U.m-COlllMUNICATIONS TO PATENT-OFFICE.
SAME-ATTOaNEY AND CLIl;:NT.
Application for an order to compel production of papers on a subpama duces tecum. Samuel A. Duncan and Edmund Wetmore, for the motion. O. A. Seward and Groverwr Lowrey, contra.
LACOMBE, Circuit Judge. Complainant is prosecuting a suit for alleged infringement of a patent for incandescent electric lamps, (No. 223,898, ap.plication November 4,1879,) issued January 27 ,1880, to Thomas A. Edison, and by him assigned to thecom plainant. On December 11, 1879, said Edison filed an application in the patent-office for improvements in electric lamps, and subsequently, namely, on December 15, 1880, divided such application into two parts, and embodied one division of the same in a new or divisional application of that date. No patent has been issued upon such divisional application. The defendaht is endeavoring to prove the contents of such divisional application. In connection with such application, the patent·office has, it is claimed, sent various letters to the applicant, Edison, and to the complainant, and the said applicant and complainant have also sent letters relating thereto to the patentoffice. The originals of the application and of the letters to the patentoffice are with the commissioner of patents, who also presumably has copies of the letters sent by his office. The complainant has possession of the original letters from the patent-office, and has copies of the letters to that office and of the application. These papers are in the hands of one of its counsel, who claims that they are privileged communications, and refuses to produce them. The proper officer of the complainant corporation has been duly subprenaed duces tecum to produce the papers, and declines to do 80, refusing to recall them from its counsel so as to obey the subprena. Application has been made by the defendant to the supreme court of the District of Columbia for a mandamus to compel the commissioner of patents to furnish copies in accordance with the provisions of section 892, Rev. St. U. S. That application has been refused. Complainants concede that the application fora mandamus and its refusal by the court puts the defendant in the same situation as if it had duly subpcenaed the commissioner to appear ·before an examiner, and, upon his refusal to produce the papers in obedience to such 8ubpcena,
l<'EDERAL REPORTER, Yul.
had applied to the court in the District of Columbia to punish him for contempt, without success. . It was further conceded Oli the argument that the defendant has done all that is necessary to put it in a position to give secondary evidence of the contents of any of those documents, the originals of which, if present, would' be admitted in evidence. Both of these applications were filed by Edison in pursuance of II contract made with the com plainant corporation November 15, 1878. By this he not only transferred to the complainant the inventions. which he had already patented, but also expressly covenanted to prosecute, with his utmost skill and diligeQce, further necessary investigations and experiments, and to promptly apply for patents for any further inventions and improvements in the field of electric light. He also agreed to prepare, or cause to be prepared, specifications, etc., of such inventions and improvements "as may be required by the company," to deliver the same to the company at its request, and to request, upon application for letters patent, that the same be issued to the company as sole owner. By this contract he conveyed to the complainant all such inventions and improvements which he might make for the space of five years after its date. The attorney who prepared, under Mr. Edison's directions, the particular application with which this motion is concerned, was the com!Jlainant's lawyer; and all the expenses of the application were borne by it. The theory on which defendant seeks to make proof of the divisional application and of the declarations made by Edison and by the complainant in their letters to the patent-office, concerning such application, is briefly this: That there is in the patent sued upon an ambiguity, its language being open to either of two constructions, one a very broad one, the other much more restrictedithat, inasmuch as the language ofihe patent is the language of the applicant, his admissions are adlt1issible for the purpose of removing the doubt with which his choice of words has surrounded the document; that for the purpose of making applications for patents covering inventions and discoveries of the kind conveyed absolutely to the complainant by .the contract of 1878, Edison and the complainant are practically the sarne; that in the particular divisional application above referred to Edison uses language which is inconsistent with the claim that in the aI3plication (the one for the patent in suit) he used the amhiguous words or phrases in their broad meaning; and, finally, that when the letters to the patent-office .are read in connection with the letters to which they are replies, this fact will still more plainly appear. This argument deals, of course, with the materiality of the proposed evidence when produced, and to this motion, which is practically directed to securing its presence in court, the complainant objects that the evidence,if produced, would be immaterial. That question, however, should not be determined upon application to produce the papers. The court should. pass upon it with the proposed evidence before it, so that it may act intelligently, and that an exception to its refusal to admit the testimony, should it so refuse, may be of avail to the exceptant upon appeal. lLthe only objection to admitting these documents in evidence be that
UNITED STATES ELECTRIC
they are immaterial, that objection is of no avail in opposition to an application which calls for their production. Without therefore finally determining the question as to the of these documents, it is sufficient to say that. in view of the contract relations between Edison and the company, and of the rule of law as to the admissibility of a party's admissions. and in view of the effect accorded to such admissions in the case cited by defendant, (Giant-Powder Co. v. California, etc., Co., 4 Fed. Rep. 720,) and, finally, in view of the contents of the documents as disclosed by the moving papers, there is not found in the ohjection as to the materiality of the sufficient to warrant the refusal of. the officers of the corporation to obey the subpama duces tecum, and to produce the documents, which are concededly in the hands of its counsel, subject to its orders and under its control. It is, however, further objected that the documents are privileged; that the application and the letters patent are the result of consultations between the applicant and his counsel; that their phraseology must necessarily reflect both the information given by the client to the counsel and the advice given by the counsel to the client; and that they have been placed in the hands of counsel under the protection of the confidential relation. Of the various cases cited upon the argument, many deal with the question as to the duty of the counsel. Coveney v. Tannahill, 1 Hill,33; Wright v. Mayer, 6 Ves. 280aj Dale v. Denison, 4 Wend. 558; Kellogg v. Kellogg, 6 Barb. 116; Chirae v. Reinicker,l1 Wheat. 280; Insurance Co. v. Schaefer, 94 U. S. 457; Hibberd v. Knight, 2 Exch. ,11; Rex v. Dixon, 3 Burrowa, 1687. In the case last cited. Lord MANSFIELD said that, instead of producing the papers, the attorney ought immedi· ately upon receiving the subprena to have delivered them up to his client. The defendant, however, is not contending upon this motion that Mr. Dyer, the counsel who received these documents, is under any obligation to produce them in response to the subprena, or to testify as to their contents. The only question now presented is whether the complainant's officers, under whose control the documents now are, wh'o have the power to call them back from the possession of counsel, even if he has not, in accordance with the suggestion of Lord MANSFIELD, above quoted, already returned them, can excuse themselves from producing these documents in response to the subprena, upon the theory that they are privileged as being the subject or the result of confidential communications between client and counsel. If documents are not privileged while in the hands of a party, he does not make them privileged by merely handing them to his counsel. The latter may perhaps properly refuse to produce them, but the former cannot do so merely because he is prepared to say that he has shown or has delIvered them to his counsel. The converse of this proposition was contended for by the complainant upon the argument, but the authorities cited do not sustain such contention. In Water Co. v. Quick, 3 Q. B. Div. 315, transcripts of short-hand notes of interviews between officers and employes of the company,which interviews were had with the object of obtaining statements of fact to be furnished to coun8el for the company for the purpose
of securing his legal advice tOllching an intended action, were held privileged.·. In Wheeler v. Le Marchant, 17 Ch. Div. 683, the questions as to ",heth<;lr certain written communications which had passed between the thed.efendants atldt:beir surveyor, and between the surveyor and splicitor, were. privileged., The court held that they, were not, except:such a,s wer.e after dispute had a,risen between plaintiffs and defendantstand for the purpose.of obtaining information,evidence, advice with reference to Jitigation existing or contemplated between the parties. Cert.ainly notlling of these cases supports the propoparty may secure for a document not otherwise privileged tJqe protection of the rule by it to his counsel. It is urged, are privileged because they are the result or product of confidential consultations betweeQcliept and counsel. This argulllent applies, of course, only to the application and to the letters to ': '. .' . from authorities cited, and from others . The, principles .. eXltinined, seem to, be these: N;either client. n()r counasta mutual cOl;no;lUnications induced by their cOllfisel may dentialrelationj nor can either be required to produce any document emanating}rolll. one anq transmitted to the other in the. cpurse of such . relation. ,Tpe client caI;lnot be required to produce letters bi his stating the factsal'l.to which be wished advice,llqf lettel'$ from his counsel. effipodyingthatadvice, or. even asking for .further facts. , asJhe reElulLof the consultation betweep client .andcounael" there is prepared SOme document, such as a form of contract or a, ,Dotice, or a and that document is given by one to the othe,r, and by him kept,. is probably privileg-ed;, its contents being confidentill,l between clieq,t and Gounsel, and the document itself effectual only as ap. exptEfssion of, the statement of ,the client as to, t1}e fitets, and of the opinion of the, counsel as to what kind of document it iadesirable to in view, ,of the facta. Genet v. Ketchum, 62 N. Y. 626. But if the document tllus confidentially prepared is not so .kept, if the contra-ct is. by the client ,exElcutedw:ith some third person, or the notice is given or the letter some outsider, its contents are no longer :confined to knowledgl'l of client aI)d counsel, and the party can no longer,as to a: document wllich he has thus made public, claim that it is it confidential. Such seems to be the. rule fairly :deducible decisions. Minet.y. Morgan, R.8 Ch .. 361j Pearse ,v. Pearse,.11 Jur, 52; Cq. v.Schaefer, \)4 U. S. 457; Ch!!eTJ.eyv. Tannahill, 1 I;Iill, 33; . WMtingv. Barney, 30 N.. 330; Randolph v· . 00., 23 278'; Foakes v. Webb,28 Ch. Div. 287; Ford y·. Tennant,9.Jur. 292; lnrc lVhitlock, 15 CivilProc. R. 204, 2 N. I'll reMitChell, 12 Abb. Pro 249·. The contends that the dOCWBEfllts are they, comrnPnications, passing between, the applicant, IYld the t,o.uching an unissued .The e:x;istence of genew privHege is recognized ip anY of cited. See, also, the· oraqthoritieagiveqjn Whiting v. Barney and In
EDISON ELECTRIC L. CO. V; UNl'l'ED STATES ELECTRIC L. CO.
BUpraj and also the cases cited in 1 GreElIll..E;v. §§ 250-252, and in Whart. Ev.' §§ 604,604a, 604b. Nor has a'IlY express legislation created it. By section 4902, Rev. St. U. S., congress has provided that· caveats and descriptions, specifications, etc., interfering with such caveats, shall be filed in the confidentialllrchives of the and preserved in secrecy; but there has been no such legislation as to pending applications. The tl0mplainant relies upon a rule or regulation of the patent-office, as follows: .. (15) and pendJng applications are preserved in secrecy. No informatIl)n will be given without authority respecting the filing by any pll.rticular person of a caveat or of an application for a patent, or for the reissue of a patent, the' pendency of any palticular case before the office, or the subjPctmatter of any particular application, unless it shall be necessary to the proper conduct of business before the office, as provided· by rules 97, 103, and 108.'"
That rule has been established under authority of section 483, Rev" St. U. S.,which provides that "the commissioner of patents, subject-. to the approval of the of the' interior, may ftom time to time establish regulations not inconsisteilt with law 10r the conduct of proceedings in the patent-office." This rule, so far as it regulates the conduct of proceedings in the patent-office, is binding upon all the s.ubordinates in that office; possibly, also, upon the commissioner of patents himself, unless he obtains the assent of the secretary Orthl:! interior to its total or partial abrogation; but it is inoperative to change the rules of evidence in courts of justice, both because to that. extent it would be inconsistent with law.· and also because the effecting of such a change is in no sense the regulation of proceedings in the patent-office. Under a somewhat similar section (sec-' tion252) secretary of the treasury, under direction of the president, is authorized to establish regulations, not inconsistent with law, to secure a just appraisal of imported goods. If, under 'such authority, he should make a rule that rio examiner or assistant appraiser should give inlormation to auy oueas to the methods by which he ascertained the composition or quality of such imported goods ashe examined, such rule. might behinding upon the subordinate as to any voluntary disclosures, but would certainly not exCuse him from testifying in court if the sufficiency of his examination of the goods were made the subject of judicial inquiry., .. , . . ' The refusal of the company's officers to produce the documents in question under BUbpama duces tecum cannot therefore be excused upon the theory that they are privileged communications. The specific relief prayed f()r on this application is for an order"That that the commissioner of patents furnish' to the defendant'8solicitors, 'at their expense, a ('erUtied copy of the tile wrapper and contt'nts of the pending application fUl' letters patent tiled in the patentollice of the United States by Thomas A. Edison on the 15th day of December, ll:ll:!O, the same being a divisiun of an earlier application known as the · pappr carbon applicatiun,' filed by the said Edison on or about December 1879; or, in lieu tlJ.ereuf, atclJwplaiuant's option, that complainant produce,
for· the examination of defendant's counsel, and for use as evidence herein. if defendant be so advised, the full text. either original papers or copies. of said. application, and of all corresponaence in relation thereto which has passed between the patent-office and the said Edison, or the complainant herein. or his or ita attorneys."
Sufficient ground for the making of such an order, if it be within the power of the court to make it, is not shown. It does not appear that the commands of the 8ubpama duces tecu.m will not be ample to obtain such evidence as that described in the motion. Merchants' Nat. Bank v. State Nat., Bank, 3 Clifl'. 202; Bischo.ffsheim v. Brown, 29 Fed. Rep. 341. Certainly as to the letters from the patent-office, the originals of which' are in the possession of the complainant, the writ of subpoona should producethe bes.t evidence; and as to the copies of the application and of the letters to'the patent-offlGe, sufficient foundation having been laid for the admission of secondary evidence, they may be offered, when produced and identified, with the same effect as if they were originals. rJ;'he notice of however, also contains a prayer for general reo lief,. ,anf!,. uMer that prayer ,the qefendant may take an order commitplppers, of the corporation, for contempt in failing to obey the Stibjiterici ducetl tecUm; .,.' . '
et al. ".
:, (OtfCUit OCYUrt, S.D. N/?/W York. November 18,1800.>
. . .A.fter. It libel for collision had been
against libelants an4 a stipulation entered mto by both parties to dismiss the action. libelants asked a rehearing, on the g.r.oUtid of t.he· newlt-dl.·scov.ered evidence of passeng-ers. Of. the libeled s.teamship. Libelants had a list of these passengElrs at the trial, but did not know their residences. Their affidavit alleged that they had afterwards learned the residences of these passengers through the Spanish consul. Held, that a rehearing would not be granted, as no excuse was given for failure to find the passengers' rllsidences by the same means before the trial. . N Oil It ground for such rehearing that new evidence bas become available through some of the steamer's crew, where libelallts, before the trial, bad a full list: of such crew, and knew which of them claimants would not examine as witnesses, but. did not call any of them.
Nor is it ground for such rehearing that libelants have discovered a witness who .. was in sight.of the steamer the morning after the collision, where information of tpe such witness was obtained from the diary of a passenger, so that, if the passenger had been found before the trial, the witness have been Newly-discovered expert evidence as to the distance at which shore lights can be seen, ,and! 'as to the effect of a change of helm in giving a list to a vessel, is no ground for such rehearing, as sucb evidence might have been obtained at the triaL
4. SAME-ExPERT EVIDENCE.
In George A. Blacle, for Hatch. Goodrifh, Deady &- Good?Vich, for the Newport.