.578
FEDERAL REPORTER.
this may be done in the manner just stated. There certainly ought not to be any greater degree of di:mculty, or circumlocution, in obtaining an exhibition of such relevl1ntand material matter in suits in equtty than at In each equill care is required, and should be observed by the court, to avoiaunnecessl1ry exposure of a party's ,private affairs, or improper prying into his case,....,...by limiting the order 'for production and examination, to what is shown to be important to the mover's case. The practice here has not been uniform j and motions such as that in 11and have, I understand, been allowed, without even the support of an affidavit. It was always, however, I believe, with the acquiescence, and .virtual assent of the other side. 'The pl'actice now indicated is deemed safe and proper and will here'a:fter be pursued. The plaintiff has leave to file the required affidavit in support of his motion, and the case will then' stand over for week to allow the defendant to put in a counter affidavit if he sees fit to do so. , ,
'NEW YORK & BALTIMORE COFFEE POLISHING CO. V. NEW YORK COFFEE POLISHING Co., (Limited.t (Oircuit Oourt, E. D. New YQ1'k.
December 27,1881.)
1.
EQUITY .1URISDICTION-BILL TO PERPETUATE TESTIMONY.
A bill for the taking of testimony in perpet1.tam rei memoriam will not De entertained, if the matter in controversy can be made the subject of immediate judicial investigation by the party who files the bill. 2. REV. S·f. H 866, 867. The effect of the provision of section 867 of the Hevised Statutes is not to exclude testimony taken under section 866, but to peimit the courts of the United States to admit in evidence testimony perpetuated according to state law. 3. INVALID LET'fERS PATENT-SUITS TO ANNUl,. .
Proceedings to annul letters patent are Wholly within the control of United States attorneys. There is no absolute duty imposed upon them to commence such proceedings at the request of any party who declares a patent to be invalid.
In Equity. . Demurrer to bill. Richards « Heald, for plaintiff. Goodrich, Deady « Platt, for defendant. BENEDICT, D. J. This case comes before the court upon a demurrer to the bill. The bill is filed to obtain, at the hands of this court, a direction that the testimony of a witness, named William Newell, may be taken in perpetuam rei memoriam. The provision of statute
N. 'I., ETC., COFFEE POLISHING CO. V.N. Y. COFFEE POLISHING CO.
579
under which the bill is filed is·found in section 866, 'Rev. St., where it is provided that "any circuit court, upon application to it as a court of equity, may, according to the usages of chancery, direct depositions to be taken in perpetuam rei memoriam, if they relate to any matters that may be cognizable in any court of the United States." The allegations of the bill, which are material on the present occasion, are these: That the complainant has been and still is using, in the city of New York, a certain process, to the use of which the defendant claims the exclusive right under letters patent of the United States; that suph letters patent aTe void for want of novelty; that in case suit shall be brought by the defendant against the plaintiff for infringement of the said. patent the plaintiff relies, fodts defence, upon the testimony of William Newell; that said Newell had himself made public use in the Unitect States of the said process for upwards of 12 years bAfore the said patent was issued; that saidNewell is up wards of 90 years of age; that the defendant has neglected, and still neglects, to bring i:& suit against the plaintiff for its infringement of said patent, and the plaintiff is unable to bring its rights to a judicial determination. In support of the demurrer to this bill it is first contended that the proceeding is vain because the deposition, if taken, will never be admissible in evidence in the suit which the complainants fear. This position is supposed to be sustained by the provision in the Revised Statutes, § 867, where it is provided that "any court of the United States may, in its discretion, admit in evidence, in any cause before it, any deposition taken in perpetuam rei memoriam, which would be admissible in a court of the state wherein such cause is pending according to the laws thereof." But the effect of the provision last quoted is misunderstood by the defendant. The provision is intended to permit the courts of the United States to admit in evidence testimony perpetuated according to the laws of the state, and in nowise relates to testimony perpetuated by direction of a circuit court of the United States in pursuance of the statute of the United States under which this bill is filed. Testimony so perpetuated is admissible in evidence in accordance with the usages and practice of courts of the United States, and by virtue of section 866, but not by virtue of section 867. The object of the bill is, therefore, legitimate, and the proceeding not vain. The next ground taken in support of the demurrer is that the bill does not show a necessity for perpetuating the testimony of the witness in order to preserve the plaintiff's rights, inasmuch as, upon the facts stated in the bill, it would be the duty of the attorney general, upon the application of the plaintiff, to institute a proceeding in the
580
name of the United States to annul the defendant's patent, in which proceeding the testimony of the witness, Newell, could be taken with like benefit to the plaintiff as if taken by direction of this court in this proceeding, or in a suit brought by the defendant against the plaintiff. It may be admitted that in cases of this description the rule is not to snstain the bill if it be possible that the matter in question can, by the party who files the bill, be made the subject of immediate judicial investigation, (Angell v. Angell, 1 Sim. & S. 89;) but no opportunity to have such a judicial determination appears open to the plaintiff in this case. Clearly the proceeding by the attorney general, supposed by the defendant to be possible, is not such an opportunity to bring the matter to a judicial determination as the rule requires. If it be assumed that the attorney general has power to institute a proceeding in the name of the United States to annul the defendant's patent for waut of novelty,-as to which see Attorney General v. Rumford Chemical Works, 9 O. G. 1062,-still it rests with the attorney general or the United States attorney, and not with the plaintiff, to say whether such a proceeding shall be instituted, and if so where and when instituted; whether the testimony of the witness, Newell, shall form part of the testimony in such proceeding. The plaintiff is without power to compel the institution of such a proceeding, and it cannot be known that such a proceeding will ever be instituted. . It is said the presumption is that a public officer will do his duty, but such presumption does not warrant the conclusion that the attorney general or the United States attorney will, as of course, institute a proceeding to annul the defendant's patent upon the plaintiff's application and assertion that the patent is void for want of novelty. There is no absolute duty imposed upon the attorney general, or any United States attorney, either by the common law or by any statute, to institute a proceeding to annul a patent issued for an invention, when applied to by any party asserting its invalidity for want of novelty. Besides, the right which the plaintiff asserts in this bill is the right to have the validity of the defendant's patent adjudicated upon a consideration of the testimony of the witness, Newell, in regard to the fact asserted by the bill to be within the knowledge of that witness; and if the plaintiff's application to the attorney general for a proceeding to annul the defendant's patent would create a duty on the part of the attorney general to institute such a proceeding, no duty
· SIMMONS V.
SPENCER.
581
to call Newell as a witness would arise. Such a proceeding would be wholly within the control of the attorney general, (Mowry v. Whit· ney, 14 Wall. 4:41,) and the most that can be said is that it is poss; ble that the plaintiff's right to tho testimony of the witness could be preserved by a proceeding taken in the name of the United States, assuming, but not deciding, that the power to institute such a proceeding exists. Such a possibility affords no reason for refusing to entertain the bill under consideration. There must be judgment for the plaintiff upon the demurrer, with bave to answer on payment of costs.
v. SPENOER and others. (Circuit Court,
n. Oolorado.
1881.)
In an action against two or more as for money had and received, a complaint is demurrable which shows that the money was received otherwise than JOIntly. 2. CASE S'fATED.
Certain deeds were left with a bank to be delivered on the payment of a specified sum of money, which' it was instructed to place to the plaintiff's credit. The money was paid in and turned over to a third party. No credit therefor was given. Held, that a joint,action as for money had and received could not be maintained against the bank and the third party
Ruling on Demurrer. S. P. Rose, for plaintiff. H. B. Johnson, for defendants. HALLETT, D. J., (orally.) The first and second counts of the complaint set forth, in substance, a sale of certain property, which the plaintiff alleges belonged to him, and conveyances from the plaintiff to McCartney, and from McCartney to the defendant Spencer, which conveyances were deposited with the Merchants' & of Leadville, to be delivered upon payment of a sum of money, amounting to $20,000, for the use of the plaintiff. By instructions given upon the leaving of the deeds with the bank, the money was to be deposited to the credit of the plaintiff in this suit. Plaintiff ,received $7,000 of this Bum, and $13,000, which ,was afterwards paid by the purchaser, whoever he may be, was not by the bank placed to the credit of the plaintiff, but was, in fact, turned over to the defendant Spencer. And upon this state of facts it is claimed that a liability has arisen upon the part of all the defendants to pay the plaintiff this sum of $13,000. The structure of these two counta
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