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burden of segregating such an intricate mass of issues into subjects for separate trial is to be cast upon the court, how much time must be consumed in interlocutory motions, discussion and investigation, before it can intelligently make the assortment! How much time is to be consumed in argument and consideration before the court can determine in each case what interrogatories a plaintiff or defendant may be compelled to answer, and how far the individual interrogated is entitled to protection against questions which seek information which he is under no obligation to furnish.
The rule relating to appeals enormously increases the labor, expense and delay of consummating an appeal, and lessens the safeguards against imposition and miscarriage of justice. It has no compensating advantage. The preparation of an abstract, which will correctly represent the effect of depositions or testimony in a patent case of any intricacy, is a task which only a trained lawyer, fully comprehending the technical distinctions, mechanism, chemical and electrical laws and processes, involved in the case, as well as the issues of fact, can properly undertake, and which may consume many weeks. It must generally involve conflict between opposing counsel. The misuse of a word or slight twist of a technical expression may essentially change the effect of a deposition on what the appellate court may consider a vital issue, and it is impossible in advance to know on what issue the case may turn in that court. Depositions which consist mainly of the recitals of counsel in their interrogatories, to which a subservient and evidently dishonest witness merely says yes or no in a way suggesting that it has been pre-arranged, and which would create only distrust and repulsion if the depositions were seen in their entirety by the Appellate Court, may in an abstract be given equal effect with the unaided narrative of a witness who testifies without assistance and in a manner carrying conviction that he both knows and impartially tells the exact facts. Anyone experienced in weighing evidence knows the need of being able to consult it in the words in which it is given if its real significance is to be ascertained. As prepared under the old rules, evidence just as taken was, in such cases as usually go up on appeal, especially in patent cases, commonly printed before the hearing below, and it cost no more to print sufficient copies for use on appeal; then, immediately on appeal one of these records could be stipulated as the transcript for appeal (with the slight additions of opinion, decree and order allowing appeal, and assignment of error) and duplicates sufficient to conform with the rules filed in the Court of Appeals. Substantially all costs of abstract and delay in making it and of printing in the Court of Appeals were avoided, and errors incident to copying and abstracting excluded. It was a great saving of labor to counsel to have the record above a duplicate of that below, corresponding in paging and other respects. The briefs summarized this evidence and cited what was depended upon to support each proposition over which there was contest. court had no occasion to consult any part of the record not pertinent to an issue which it considered material, and then had before it the only reliable data for determining that issue.
These new rules have been regarded as an imitation of English rules, and it is true that many of them are adopted, apparently without recognition of the differences of conditions which make them inapplicable here; but a leader of the English Bar in patent cases expressed to me his surprise that such a rule as this relating to appeal should be tolerated, saying that any court which had to consider the effect of evidence must have the exact text, in questions and answers, accessible to it; that whatever use was made of abstracts in England did not dispense with the full text being carried to the appellate court, where it was always accessible and referred to in case of dispute over the effect of evidence.
The situation in England is materially different in respect to many of the circumstances and laws by which its equity rules are governed. There are comparatively few patent cases tried there, and substantially all are tried in London, to which place practically every witness within the territory where the English patent law is operative can be brought within a few hours. The English counsel to whom I have just referred, told me at our Montreal meeting, that there had not been a patent case tried in England outside of London for ten years; that only four had been begun outside during that time and these had been transferred to London before or during the trial; and that there were only about six counsel specially engaged in trying patent cases there. Here, witnesses needed in the same case may be scattered from Maine to California, and the need for them, or their names and probable location, may only appear as the result of examination of previous witnesses. There, the law in regard to the defenses available in patent cases differs in many material respects from ours. There provisional specifications are available as proof of anticipation, irrespective of whether any patents have issued on them; they are not dependent on prosecuting the patents to allowance, and can be filed without reference to either invention or patentability and relied upon as evidence of publication within the realm; and there is seldom any evidence taken concerning prior uses. Here, the evidence concerning prior uses is dependent on witnesses, book entries or other documents, scattered over the whole vast country; this evidence constitutes a very large proportion of the proofs upon which our patent cases must be determined, while we have nothing corresponding to the British provisional specifications to serve as a substitute for such proofs, and applications for patents which have not passed to issue are neither accessible for inspection nor have the effect of prior publications. There, the preliminary questions arising out of our federal and state constitutions which are dependent upon divisions into numerous states and divided jurisdiction, are absent.
I have passed over some features of these rules to which I intended to refer, because I must not trespass further on your patience. The rule which transfers cases brought on the wrong side of the court to the right side, instead of dismissing them, I regard as altogether salutary. If it had not the sanction of the Supreme Court, there might be some question how far such an innovation was within the province of court rules, but concerning its beneficial effect, I think there is no room for serious dispute. It has since been, in substance, embodied in an amendment to the judicial code.
In crowded courts where the trial of practically all cases upon testimony taken in open court as the cases are reached on the call of the docket is insisted upon, faithful and conscientious judges must be worked beyond the limit within which they can do their best work or long endure the strain, and are compelled to dispose of causes more hastily and with less consideration than is satisfactory either to themselves or to litigants. Judges must be drafted from distant parts of the country; contingencies of crowded dockets where one case may occupy weeks of trial, or several cases drop out unexpectedly, oblige lawyers and witnesses, often necessarily brought from great distances, to be kept indefinitely waiting their turn, at serious inconvenience and expense. Because of the stress to which the courts are thus subjected, engagements of counsel and expert witnesses in the trial of other cases are, in some districts, being treated as no excuse for postponement; hence, in cases that are at all complicated, and in substantially all patent cases, it is necessary to have several counsel, each prepared to conduct the case if others are engaged in trials elsewhere. There is the same difficulty with experts. Only counsel and experts who have spent months on that particular case, and are exceptionally familiar with the art to which it pertains, may be able to properly serve. A rule provides for the expert who is to testify filing an affidavit containing his direct testimony within a limited time after the case is at issue (necessarily before it may be known to what state of facts his expert testimony must be addressed) and the production of the same expert for cross-examination at the trial which would generally be many months later. The expert may be then peremptorily engaged in testifying in another protracted case, or under disabilities which prevent his appearing for cross-examination, or out of the country and unable to return, or no longer living. In some circuits the hardships imposed by these rules are mitigated by liberally construing the phrase "good and exceptional cause for departing from the general rule," while others are narrowly construing it, refusing to make exceptions, and harshly enforcing the general rule, spreading the impression among litigants that their rights are little respected by courts having a permanent tenure, an impression which even where unjust, may have unfortunate consequences.
Those rules have served one timely purpose as warning of the hazards incident to radical innovations—how well-intended projects for reform may lead us far astray, how in seeking escape from lesser ills we may flee to greater ills we know not of.
Some of them have elements of real merit which should be retained; others were better relegated to the limbo of unsuccessful and abandoned experiments.
THE POSSIBILITIES OF DISCOVERY IN PATENT LITIGATION: SOME RECENT JUDICIAL
CHARLES E. TOWNSEND,
OF SAN FRANCISCO, CAL. With the advent of the new equity rules, supplemented, perhaps, by an awakened legal conscience, fresh reasons are presented why we should inquire into the manner and means by which time, expense and annoyance to the courts, the Bar and the public may be saved or avoided in making proofs, and otherwise maturing cases for trial on their merits.
We must all be appreciative and in more or less degree deserving of the varied criticisms directed impartially at Bench and Bar for the delays and expense incident to litigation, and especially patent litigation. One of the chief deterents to the bringing of rightful actions, and, conversely, the chief reliance of wilful infringers, is the practical knowledge that a patent law suit is too often a rich man's prerogative. Yet, if the Bar as a unit, would but realize that patent suits, so we have been told by a distinguished gentleman at a former meeting of this Association (A. J. Walters, K. C., September 2, 1913), have increased in England in direct proportion to the lessening of time and. expense in trying cases, there might be an automatic ending of much that has given rise to criticism on the part of the public here.
Critics and reformers have sought, as a rule, for improvement in legislation, whereas the possibilities and potentialities of the laws now in force are largely sufficient for alleviation of such onerous conditions as may present themselves in practice.
As you all know, discovery has long been an invaluable aid in the administration of equitable remedies; its functions being often
* Supposedly we may speak of an awakened legal conscience, as well as of an awakened civic, or public, or national conscience. A "legal" conscience portends a recognition at least of a dormant fact rather than the invention of a new fiction.