11 F.2d 908 | D. Del. | 1926
To interrogatories filed by the plaintiff in this patent infringement suit of tbe New Jersey Zinc Company against E. I. Du Pont de Nemours & Company, Inc., tbe defendant has presented objections. Of these tbe.most fundamental is that tbe interrogatories, intended presumably to elicit information to support tbe allegation of infringement, are not restricted to tbe ascertainment of tbe existence or nonexistence of facts wbicb would establish infringement, but that, on tbe contrary, they inquire generally and without regard to tbe patents in suit to that which defendant does and makes in its lithopone business.
Tbe allegation of tbe bill of complaint with respect to infringement is tbe bald one, based upon information and belief, that tbe defendant “ * * * did * * * in Essex county, New Jersey, and elsewhere in tbe United States of America, use and cause to be used, and is now using and causing to be used, methods of manufacturing lithopone embodying tbe inventions claimed "and secured by tbe method claims of said letters patent Nos. 1,411,645, 1,411,646, 1,414,793, and 1,446,637, and in tbe practice of such methods has produced and is now producing lithopone embodying tbe inventions claimed and secured by tbe product claims of said letters patent Nos. 1,411,648 and 1,-446,637 * * *.” If it be assumed that an allegation that a defendant is practicing tbe methods and producing the product of tbe patents in suit, but wbicb does not assert by way of charge or otherwise the acts and facts which constitute such practice and identify such product, meets tbe requirements of equity rule 25, yet it is obvious 'that such generality of pleading can neither broaden tbe suit nor extend tbe rights of tbe plaintiff thereunder beyond tbe maximum scope of tbe patents sued upon.
While recognizing tbe right of a plaintiff in a patent suit to obtain from a defendant or its officers through interrogatories certain facts pertinent to tbe issue of infringement, it is, likewise, obvious, I think, that any interrogatory seeking facts, to establish infringement, that are not affirmatively shown by tbe allegations of tbe bill (or possibly by an inspection of tbe patents themselves) to be limited to those facts only which fall within tbe boundaries of tbe field occupied at least prima facie, by tbe patents in suit, cannot be sustained. Moreover, it is well established that only those facts directly pertinent to tbe issues may be obtained by interrogatories, and that a party-may not through interrogatories inquire for facts outside that field, in order to establish indirectly or circumstantially tbe facts that lie within it. J. J. Day Co. v. Mountain City Mill Co. (D. C.) 225 F. 622; F. M. Co.
Tested by the foregoing principles, I am of the opinion that interrogatories Nos. 1 to 12, inclusive (No. 3, to which no objection was made, excepted), and No. 22, are faulty, and that the objections thereto must be sustained. The remaining interrogatories of the plaintiff and the objections thereto made by the defendant will abide the agreement of counsel with respect thereto.
