238 F. 925 | E.D. Mich. | 1916
Plaintiffs charge the defendant with infringing five patents on coin handling devices, all of which appear to be on exceedingly complicated mechanisms. Seventy-five claims are relied upon by plaintiffs in their allegations of infringement. Defendant’s answer recites the usual defenses of noninfringement and in
“Point out, as to patent No. 691,435, what part or parts of defendant’s structure respond to—
“(1) ‘A wrapping mechanism normally inoperative and set in operation by tbe registering devices,’ recited in claim 1.”
Under equity rule 58, either party may ask the opponent questions which, if answered, will disclose facts or documents material and pertinent to the support or defense of the cause; the object of the rule being to simplify the issues, and so far as possible to dispose of material issues in advance of the actual hearing .of the case. I am in entire sympathy with the rule and the purpose of it. Equity rule 58 does not warrant the court in requiring answers which would give no more than an opinion, or no more than the evidence intended to be relied on in the support or the defense of the cause; but if the answer would disclose a material fact or document, an interrogatory should not be denied simply because it would, in disclosing the material fact or document, require an expression of opinion, the disclosure of some of the evidence on which the party interrogated would rely at the trial, •or the giving of other information which, standing alone", could not be required. While the answers to the first 72 interrogatories might be helpful to the defendant in preparing its defense, and while some other rule may be broad enough to give it relief, I do not consider that the answering of such interrogatories would result in the discovery of facts within the meaning of equity rule 58. The interrogatories in reality ask for a detailed statement of plaintiffs’ allegations of infringement as to those portions of the claims inquired about. The answers would be an interpretation or an opinion of the party interrogated. The first 72 interrogatories, therefore, must be denied.
“Point out, by reference to tbe drawings of patent No. 691,435, wbat part or parts of tbe structure illustrated in tbe drawings of said patent respond to—
“73. ‘Means for advancing tbe coins separately,’ recited in claims 1, 2, and' 8, and ‘means for supplying coins separately,’ recited in claims 9, 11, and 12.”
Interrogatories 73 to 96, inclusive,-are denied, for the same reasons given in connection with interrogatories 1 to 72, inclusive.
Interrogatory 97 reads as follows:
(97) “State, as to eacb claim of tbe patents in suit, wbat date of completion of invention plaintiffs will rely upon at tbe trial.”
I consider the interrogatory a proper one, and it should be answered. I would also consider proper interrogatories asking when the
Interrogatories 98 and 99 are as follows:
(98) “State, as to each of the patents in suit, whether or not a device as shown in the drawings of the patent has ever been constructed, and, if so, give the date of completion of the device.”
(99) “State, as to each of the patents in suit, whether or not plaintiffs have ever made, or caused to he made, devices of a different construction from that shown in the patents, and, if a device or devices have been made, illustrate and describe such device or devices, and give the date or dates of completion of such device or devices.”
These two interrogatories are too indefinite, and are not material to the defense of the cause at this stage of the procedure. If these inquiries are an endeavor to ascertain the construction or constructions that went into extensive use, as alleged in the bill of complaint, they are not in proper form. Full and complete answers to the interrogatories as they are worded might mean unnecessary disclosure to the defendant of plaintiffs’ machines. If interrogatory 98 was restricted to devices completed prior to the date of filing of the application which resulted
If interrogatory 99 inquired as to devices used more than two years prior to the filing of the application that resulted in the patent sued on, it might in some cases be proper. Under some circumstances, such an interrogatory might put plaintiffs to considerable trouble and expense to answer, and if the interrogatory was objected to on this ground, a proper showing by defendant as to the necessity for the information should be required by the court. Interrogatories 98 and 99 are denied.
(100) “State wliere the device is located upon which the plaintiffs will rely in their prooí of infringement, and whether or not such device can be inspected on behalf of defendant.”
(101) “If the machine referred to in interrogatory 100 cannot be inspected on behalf of defendant, describe and illustrate the device sufficiently for all parts thereof to be understood.”
The answer to these interrogatories would be material to the defense of the cause, since the answers would inform defendant, or enable it to be informed, not only as to the construction of the device plaintiffs will rely on in their proof of infringement, but give defendant information which in all probability would enable it to ascertain whether it had manufactured or committed any other act of infringement in connection with the device plaintiffs complain of. The answers would advise the defendant, providing it had manufactured or sold the machine, whether any change having a bearing on the question of infringement had been made after the machine had been disposed of by defendant. Interrogatories calling for facts or documents tending to definitely advise the defense of the act or acts and device or devices complained of I consider proper. Such interrogatories are not only material to the defense, but tend to narrow the issues. Plaintiffs are required to answer interrogatories 100 and 101.
Equity rule 58 has been given consideration in a number of cases: Bronk v. Scott Co., 211 Fed. 338, 128 C. C. A. 17 (C. C. A., Seventh Circuit); P. M. Co. v. Ajax Rail Anchor Co., 216 Fed. 634 (D. C., N. D. Illinois, E. D.); Luten v. Camp et al., 221 Fed. 424 (D. C., E. D. Pa.); Blast Furnace Appliances Co. v. Worth Bros. Co., 221 Fed. 430 (D. C., E. D. Pa.); J. H. Day Co. v. Mountain City Mill Co. et al., 225 Fed. 622 (D. C., E. D. Tennessee, S. D.); Window Glass Machine Co. et al. v. Brookville Glass & Tile Co., 229 Fed. 833 (D. C., W. D. Pa.); Gennert v. Burke & James, Inc., 231 Fed. 998 (D. C., S. D. New York); F. Speidel Co. v. N. Barstow Co., 232 Fed. 617 (D. C., D. Rhode Island); Rodman Chemical Co. v. E. F. Houghton Co., 233 Fed. 470 (D. C., E. D. Pa.); Union Sulphur Co. v. Freeport Texas Co., 234 Fed. 194 (D. C., D. Delaware); Dupont v. Dupont et al., 234 Fed. 459 (D. C., D. Delaware). But these decisions are not entirely in harmony. I am in favor of applying the rule in such a manner as to simplify as far as possible, not only the issues of the cause, but also the testimony either in behalf or in defense of the cause.
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