32 F.R.D. 372 | D. Minnesota | 1963
This is a suit for infringement of letters patent on certain radiation and gas burners. It is alleged that defendant has been and still is infringing said letters patent by making, selling and using or causing to be made, sold and used burners and components embodying the patented inventions, and will continue to do so unless enjoined by this court.
Preliminary to trial at the May 1963 General Term of Court, plaintiffs move ' the court (1) for letters rogatory to take the depositions of Otto Heimerl, Dr. Hábil W. Linke and Herbert Mullejans, all German nationals residing in Germany, and (2) to amend the complaint to include Industrial Ceramics, Inc., as a defendant. The motions will be considered and ruled on in the above order.
1. Motion for letters rogatory.
Plaintiffs move for letters rogatory in order that they may establish by expert testimony (a) the novelty of the patents’ teaching in the art to which they relate (b) the standing of the inventions in their relationship to the art which preceded them (c) the public acquiescence, imitation and acceptance accorded the invention by those in the art who use or market the invention and (d) the identity in structure, mode of operation and result of the accused structures and the structure defined by the claims of the patents in suit.
Defendant contends that letters roga-tory should not be issued because the subject matter is such that it could be more easily and efficiently handled by the appearance of the expert in court. The difficulty of cross-examination is stressed. Defendant also asserts that the commercial success of the structures of the patents in suit can be adequately testified to by plaintiffs since they are at the present time actively engaged in the manufacture and sale of this product in the United States. Defendant further contends that testimony concerning the results of tests made in Germany is unnecessary and should not be allowed because tests can be made in the United States to verify the German tests, and the testing experts will then be available,
As a rule letters rogatory are not issued to evoke expert testimony where there is adequate expert testimony available.
It has been held that although it is not the policy of the courts to allow depositions to be taken of persons in foreign countries for the purpose of getting expert testimony, such a deposition may be allowed where expert testimony would not otherwise be available.
In the last analysis, the trier of the facts may consider testimony of witnesses who are expert on certain subjects having to do with issues in the case being tried, which is based on their knowledge of the subject matter in issue. The ultimate weight to be given said expert opinions rests with the court or jury, as the case may be, and given such weight as the trier of the facts sees fit to adopt without surrendering its own judgment to that of the expert witness.
The motion of plaintiffs to take letters rogatory is granted, conditioned on the same being completed, returned and filed with the Clerk of this court in time for trial at the May 1963 term of the court.
It is so ordered.
2. Plaintiffs’ motion to amend the complaint to include Industrial Ceramics, Inc., as a party defendant.
Under Rule 15(a) of the Federal Rules of Civil Procedure, parties may amend their pleadings after a responsive pleading only with the consent of the court. Plaintiffs wish to amend their complaint to include as a party defendant Industrial Ceramics, Inc., a corporation, which was not in existence at the time this suit was commenced. Examination of the file discloses that this corporation is engaged in the production of one of the accused structures which it supplies to
The motion to amend the complaint is .granted conditioned on defendant’s right to a continuance over the term if additional time is needed by defendant to prepare for trial.
It is so ordered.
Defendant is allowed an exception.
. United States v. Dunn, 55 F.Supp. 535 (D.C.N.Y.1944).
. Holliday & Sons, Limited v. Schultzeberge, 57 F. 660 (C.C.S.D.N.Y.).