GALION IRON WORKS CO. et al. v. OHIO CORRUGATED CULVERT CO. et al., 244 F. 427

DENISON, Circuit Judge (after stating the facts as above). In. so far a!s injunction was sought against the prosecution of more suits than one, and by analogy to the nomenclature most nearly appropriate, this may be named a bill of peace. Assuming to the fullest extent complainants’ general theories of this particular remedy, we agree with the court below that the facts here disclose no sufficient reason for the exertion of the powers of a court of equity through an independent bill.

The apprehended suits were threatened by parties not within the jurisdiction of the court, and against whom there could be no relief. The five existing suits were pending in the same court before the same judge. There is ho satisfactory and sufficient allegation that the several plaintiffs declined to enter into- any reasonable arrangement whereby one suit should become a test case; nor, if the allegations on this subject be thought sufficient, does any reason appear why the court would not, upon motions in the law cases, regulate their hearing so as to prevent hardship or oppression.

If it be trae that all the licensees had a common interest in all the cases in that each suit is in fact prosecuted for the benefit of all — as is now claimed — this fact can be developed without difficulty as other facts are proved in cases at law, and a judgment in one case would become an adjudication in the others. Penfield v. Potts (C. C. A. 6) 126 Fed. 475, 61 C. C. A. 371; Greenwich Co. v. Friedman (C. C. A. 6) 142 Fed. 944, 74 C. C. A. 114.

Indeed, counsel for appellees on the hearing .in this court offer to join in any reasonable stipulation to make one case |he test of others, or to use in one proofs in another, and we assume that they will, in the court below, adhere to this offer. Upon the whole and upon this branch of the case, we see no sufficient basis for the suit. Coming to the subject of bills of discovery: For the purposes of this opinion, but without deciding, we may assume that appellants are rivht in their positions, which they base upon Carpenter v. Winn, 221 U. S. 533, 31 Sup. Ct. 683, 55 L. Ed. 842. See, also, Cheatham Co. v.

American Co. (D. C.) 198 Fed. 496; General Film Co. v. Sampliner (C. C. A. 6) 232 Fed. 95, 146 C. C. A. 287. These are: (1) file jurisdiction of a federal court of equity continues unimpaired, to entertain a bill for discovery only filed in aid of the claim, affirmative or negative, made in another suit by the party who files the bill; (2) the various existing methods to procure evidence in proceedings at law are not “remedies,” as that word is used in R. S. § 723 (Comp. St. 1916, § 1244); and (3) the cases like Brown v. Swann, 10 Pet. 497, 9 L. Ed. 508, and United States v. Bitter Root Co., 200 U.

S. 451, 26 Sup. Ct. 318, 66 C. C. A. 652, which intimate that it must appear that the evidence can be obtained in no other way, were cases brought for discovery and relief, and, consequently, are not pertinent. Conceding all these contentions and the further claim that the right in a proper case to have a decree for discovery is absolute and not discretionary with the court (Bell v. Pomeroy, Fed. Cas. No. 1,263), it still must be essential that the bill disclose a substantial necessity for the relief.

There is neither precedent nor — as we think — reason for the institution of an independent proceeding in equity, delaying or tying up the orderly prosecution of a suit at law, if the only thing to be gained is the disclosure of evidence comparatively unimportant or merely cumulative. This bill discloses that the Gabon Company is in the possession of ample and satisfactory proof of a great part of the things alleged; but, as to the remainder (and with one exception), it seems to> pertain to matters which are relatively unsubstantial or are plainly cumulative.

More specifically, the Watson patent has been sustained by the Court of Appeals for the Second Circuit. Its opinion discloses that the widespread public adoption of the device was an clement of importance in determining that the invention was patentable.

The present bill alleges that this public adoption, and such public acquiescence in the patent as there was by decree or otherwise, resulted from other causes than the merits of the patent, e. g., combinations and promotive plans among the territorial licensees, payments and concessions to induce the cessation of any infringement and to procure consent decrees, the control through another patent of the only suitable material, etc., and it sets out much evidence of the same class and to the same effect already in the possession of the Gabon Company.

The careful analysis of the bill, found in appellant’s brief, shows that seven of the eight points covered pertain each to an item of evidence tending to establish some one of these facts, which fact, in turn, tends to discredit the drawing of any presumption of patentable novelty from the history of the public adoption of the patented article, but no one of which is controlling as to the ultimate inference. We are clear that such tilings are beyond any scope which, under the most liberal construction, can now be permitted for bills of discovery.

The eighth point pertains to the common interest of all licensees in every suit by any one of them, and this can be material only because it may disclose a lack of right by one licensee to sue alone or because a judgment in one case will be a bar to the others. As to the first reason, in that event the bill would affect the title of the adverse party, and be a fishing bill. As to the second, there is no room to claim a former adjudication, until there has been ¿.judgment, and the Gabon Company’s rights are protected by the control which the law court has over the five pending suits. The decree below is affirmed.