93 F.2d 936 | 6th Cir. | 1937
Appeal from an order of the District Court dismissing a bill of complaint praying for leave to take depositions in perpetúan! rei memoriam under 28 U.S.C. § 644 (28 U.S.C.A. § 644).
The parties are competitors in the business of manufacturing incubators, appellant being the owner of Petersime patent No. 1,562,787, and appellee being the own-, er of Stover patents Nos. 1,911,249, and 1,911,250. On August 6, 1935, appellant filed a bill of complaint (Equity Case No, 391, Southern District of Ohio, Western Division) in which it prayed for an injunction, accounting and damages for acts of alleged unfair competition, and also that a declaratory judgment be entered under section 274d of the Judicial Code (28 U.S.C. § 400 [28 U.S.C.A. § 400]), adjudging and decreeing that the incubators and hatchers manufactured by appellant are not infringements of appellee’s patents.
The District Court held in substance that as depositions de bene esse under 28 U.S.C. § 639 (28 U.S.C.A. § 639), or under the dedimus clause of 28 U.S.C. § 644 (28 U.S.C.A. § 644), could be taken upon all questions of prior use in the equity suit previously filed by appellant (No. 391), the motion to dismiss the bill of complaint must be sustained. Appellant assigns error to this ruling upon the ground that 28 U.S.C. § 644 (28 U.S.C.A. § 644), which provides for depositions under a bill to perpetuate testimony, gives a distinct and separate right to take depositions from that given by 28 U.S.C. § 639 (28 U.S.C.A. § 639), which provides for the taking of depositions de bene esse in a pending suit. In this connection appellant cites the last sentence of section 644, which declares that the provisions of section 639. to section 641 do not apply to any deposition taken under the authority of section 644. Appellant therefore contends that it is immaterial whether depositions de bene esse can be taken, and that under section 644 it is entitled as of right to take depositions in the instant case.
But the fact that the prerequisites of depositions de bene esse are not the same as those of depositions taken under a bill to perpetuate testimony does not determine the question in favor of appellant. Neither is the fact that the dedimus clause of section 644 is separate and distinct from the clause providing for bills to perpetuate testimony [Westinghouse Machine Co. v. Electric Storage Battery Co., 170 F. 430, 25 L.R.A.(N.S.) 673 (C.C.A.3)] conclusive. The prerequisites of the bill to perpetuate testimony are stated in the recent case of Arizona v. California, 292 U.S. 341, 54 S.Ct. 735, 737, 78 L.Ed. 1298, in which the Supreme Court declared that “it must appear that the facts which the plaintiff expects to prove by the testimony of the witnesses sought to be examined will be material in the determination of the matter in controversy; that the testimony will be competent evidence; that depositions of the witnesses cannot be taken and perpetuated in the ordinary methods prescribed by law, because the then condition of the suit (if one is pending) renders it impossible, or (if no suit is then pending) because the plaintiff is not in a position to start one in which the issue may be determined; and that taking of the testimony on bill in equity is made necessary by the danger that it may be lost by delay.” Cf. Westinghouse Machine Co. v. Electric Storage Battery Co., supra. This record shows that a suit is pending in which it is possible either to take depositions of witnesses or to record their testimony as to the existence of the very facts which appellant wishes to establish and to perpetuate such testimony in the “ordinary methods prescribed by law.” Proof of every instance of prior use which appellant sets forth can be offered in case No. 391. While paragraph 9
The order is affirmed.
28 U.S.C. § 644 (28 U.S.C.A. § 644).
“In any case where it is necessary, in order to prevent a failure or delay of justice, any of the courts of the United States may grant a dedimus potestatem to take depositions according to common usage; and any district court, upon application to it as a court of equity, may, according to the usages of chancery, di- • reet depositions to be taken in perpetuam rei memoriam, if they relate to any matters that may he cognizable in any court of the United States. And the provisions of sections 639 to 641 of this title shall not apply to any deposition to be taken under the authority of this section.”
The bill of complaint fails to allege that any of the persons whose testimony is desired are old, infirm, or about to leave the jurisdiction. Cf. New York & B. Polishing Co. v. New York Polishing Co. (C.C.) 9 F. 578, in which the testimony desired was of a witness more than ninety years old.
“9. Plaintiff avers that the method it employs and the apparatus that it employs for the practice of the method have in substance been used by it and its customers in the same manner and with the same results since 1925, more than two years prior to the filing date of said Letters Patent, and therefore could not be construed as a matter of law and as a matter of fact as coming within the scope of said patents because otherwise said patents would be invalid; and plaintiff avers that it does not manufacture, use or sell anything covered by said patents nor practice the method taught or covered thereby and that it does not infringe said patents.”