FEDERAL REPORTER" vol. 49. DORNAN
(Otrcutt Oourt, JJ;. D.
II.: KEEFER. 1
January 29. 1892.)
Metbods other than those stated in'hls.apeci:ll.cationofoarryingan Invention Into e:l!ectare not secret inventions, such. as will be protected from disclosure under Rev. ,St. § 4908, and interrogatories d(rected to disclose such methods must be an· swered by a patentee when relevant to the ma.tter in controversy.
Motion to compel a patentee called as witness to answer interrogatories. Interference proceedings in United States patent-office between T. B. Dornan and WilliamB. Keefer, the'latter being the patentee of letters patent No. 443,095 for ingrain carpet fabric. Keefer had deGlined to describe other than by reference to his patent the method of weaving employed to' produce a fabrie offered in evidence as part of the proof of date of Keefer's invention. MOtion granted. Henry D. Williams and Witter & Kenyon, for the motion. A. B. Stoughtcm, oppused. BU1LER, District Judge. The court's jurisdiction, is admitted by counseljartd thnt subJeot' not therefore be considered. The witness declines to answer on the ground that the questions propounded are not proper cross-examination, arEHtt'elevant to the subject in controversy, and that they seek the disclosure of a secret discovery or ... tion-such' 'as' is protected. by secti60',4908 of· the Revised Statutes. Neither gtoundcan be sustained. I need not discuss the subject. It is SUfficient 'to say that the interrogatories 'seem to arise out of the examination in chief; and the information' BOught appears to' be connected with . The courtado not refuse their aid to comthe subject in pelauswers on the ground of irrelevancy' exeept where tbe answers are clearly" impertinent' it'()annot be known in advance of trial whether a particular :.Datter which seems to hl\ve a remote conne<\tionwith the general' Rubjectinvofved, will be ,relevant or not. It seems clear that the witness is not entitled to the protection of section 4908. If he has a secret which is likely to be disclosed by the inquiry, it is one involved in hi!' patented discovery; and which he has no right, therefore, to withhold from the public. In applying for the patent it was his duty to disclose the most available method known to him of carrying the discovery into effect-in other words, of manufacturing his new fabric. This information, which may be used by others after his patent has expired, is an important part of the compensation which the public obtains for the temporary monopoly granted him. If he could withhold it, disclosing an inferior method simply, which he does not employ, the discovery would never become aVllilable public property, as the patent laws contemplate it shall. He would have a monopoly after his patent had expired, which would continue so long as he could
lReported by Mark Wilks Collet, Esq., of the Philadelphia bar.
." :. THE WEATHERBY.
conceal this material part of his discovery. I do not say that such disclosure was essential to tlle validity of his patent,: (that question is not before me,) but that the information withheld does not constitute such a secret as the section; or equity, protects. See 1 Rob: Pat. p. 63; 2 Rob. Pat. pp. 75, 76; (p,rr v. Rice, 1 Fish. Pat. Cas. 201; Johnson v. .!lQot, 2 Fish. Pat. Cas. 301. The usual order requirilJgthe witness to 8,nswer'may beprepart:d·.
THE WEATHERBY. 1
SPREcicELS v.' THE
D. Pen.",..ylivan1.a.Febj.'Us;ry S, 1892.)
, :Costs wiUnot lie placed on 1lbelant,.ln whose favor a final decree has been made,
on account of the decree not ex-ooeding the amount which wil.sadmitted by respllndent's answer, although all questions in Qantroversy were deci4ed in , favor. and the' expens68 of the suit were greatly inoreasedby the large sWn ong. inally olaimed by libelanli. , j
In Admiralty. ,'.Libel by. Claua·Spreckels against the steamer erby. Motion by respondent to place the costs on libelant. The libel as filed claimed $97,000, proceeds of sale of damaged cargo, damaged witb:(.mtfaultofthe,ship. Respolldent ip answeradm.itted .52,000 due. subject to deduction for general average. For this lllUountadIDit. ted,the final decree ,was made, Which was openeq and further reduced 48 Fed. Rep. on account of ditfElren,ceip; rate of ,exchange. The expenses of suit had been greatly increasedbYl'equiring a tion for $110,000, which was reduced under and of the steamer to &75,000. Motion denied. Morton P. Henry, fQr Ourtia Tilton, for respondent. District' J udgl3.: While the court has over the of costs, and may impose them on either party, as in equity,. they ally follow. the event of the indeed except where thing unusual appears, which renders it just to impose thalli 6n the side. I do not find anything in this case which would fr9m the general rule. The that of them, at least,'s4p;uld ,be borne by the was made at an earlier stag<:l in theproceedillgs, and the subject was .reserved, for consideration unti,l this I have considered i,t in the of the invoked. by the respondent's coull!lel, but. ad9Pt his views it."
'l.Repol'ted by Mark Wilks doUet, Esq.,