itself) why this rule has been so much in controversy is due to the fact that the defendant in patent, trade mark or unfair competition suits attempts to sue the complainant in its answer in the same cause of action under a patent which it owns, or, on a complaint of unfair competition, as a counter-irritant for the cause of action brought by the complainant, and in some instances where it has no real defense to the validity of the plaintiff's patent or to the question of infringement. Some courts, under a motion to make the answer more definite and certain, have required the defendant to state very specifically the exact defenses set up in the answer that he intends to rely upon at the trial, and in one case, Judge Clarke of the Northern District of Ohio, Eastern Division, in entertaining such a motion, compelled the defendant in a patent cause to specify in what respect each of. the patents pleaded by him disclosed any of the elements or combination of elements described in plaintiff's patents, and in what respect they negatived the novelty and invention of the device therein shown and described.50 The motion to strike out is permitted as a means for testing the sufficiency of affirmative defenses in the answer; it has been used in some unreported cases in lieu of exceptions abolished by the rules.51 Supplemental pleadings have been permitted 52 which allege material facts occurring after the original pleading, or facts of which the party was not cognizant at the time the original pleading was filed (such as judgments or decrees of a competent court rendered after the commencement of the suit), particularly where the supplemental matter related to the matters at issue.5 Where an amendment to a bill has been made, answers must be filed to this within ten days, except under extraordinary conditions.54 The rule 55 permitting parties generally to intervene has not thus far been extensively considered, and it is too early to say what the 50 Coulston v. H. Franke Steel R. Co., Inc., 221 Fed. 669 (1915). 51 Federal Equity Rule 33. 52 Federal Equity Rule 34; Terry Steam Turbine Co. v. B. F. Sturtevant Co., 204 Fed. 103 (1913); Marconi Wireless Telegraph Co. v. National Electric Signaling Co., 206 Fed. 295 (1913); Sheeler v. Alexander, 211 Fed. 544 (1913). 53 Kryptok Co. v. Haussmann & Co., 216 Fed. 267 (1914). 4 Federal Equity Rule 32. 55 Federal Equity Rule 37. effect of this rule is to be. The reported decisions 56 indicate a rather strict construction of this rule, although it is to be noted that the reasoning applied to it is somewhat analogous to that of Rule 30, and the decision which most fully discusses this rule is one by a court giving the restricted construction to Rule 30. One or more representatives of a class may sue or defend for the whole where it is impracticable to bring them all before the court,57 but the allegations must be sufficient in order to enable one party to do this.58 The court may also finally determine a cause in the absence of persons who will be proper parties,59 but the decrees entered shall be without prejudice to those absent, although this does not permit the court to proceed in a case where the indispensable parties are not before it.60 The Courts of Appeal, in cases where the testimony of witnesses has been taken before the trial court,61 are apparently giving greater weight to the findings of that court than where the evidence was taken by depositions. As was said by Judge Sheppard, speaking for the Court of Appeals of the Fifth Circuit: "We recognize the rule that the findings of fact... by the District Court are entitled to great weight by the Appellate Court. The reason for the rule is based upon the trial court's opportunity for judging the credibility of witnesses; the reason for the rule ceases, however, when the trial court's finding is based . . . on depositions.' 64 62 There are but few reported decisions relative to the rules requiring testimony to be taken orally in open court,63 that of allowing depositions to be taken in exceptional cases, and permitting affidavits of expert witnesses to be filed in patent and trade mark cases. Although the practice of filing affidavits is being more or 56 Atlas Underwear Co. v. Cooper Underwear Co., 210 Fed. 347 (1913); Gaumont v. Hatch, 208 Fed. 378 (1913). 57 Federal Equity Rule 38. 58 Raich v. Truax, 219 Fed. 273 (1915). 59 Federal Equity Rule 39. 60 Hyams v. Old Dominion Co., 204 Fed. 681 (1913). 61 Under Federal Equity Rule 46. 62 Hamburg-Amer. Packetfahrt A. G. v. Gye, 207 Fed. 247, 253 (1913). 63 Federal Equity Rule 46. 64 Federal Equity Rule 47; P. M. Co. v. Ajax Rail Anchor Co., 216 Fed. 634, 636 (1914); Victor Talking Machine v. Sonora Phonograph Corp., 221 Fed. 676 (1915). 65 Federal Equity Rule 48; North v. Herrick, 203 Fed. 591 (1913); Acme Steel Goods Co. v. American Metal Fasteners Co., 206 Fed. 478 (1913). less extensively followed by some attorneys, it is not by any means universally used. The courts usually permit such affidavits to be filed upon the petition of the parties desiring to use them. In some instances, attorneys have attempted by petition to compel their opponents to file expert affidavits in advance of the trial. The courts, however, so far as I have been able to ascertain, have not granted any such petition by an adverse party where the right to take the testimony of experts in open court was insisted upon. This, perhaps, is due to the fact that some courts are refusing to permit experts to testify unless they have the proper qualifications, and, in some instances, have stricken out affidavits and testimony of experts on the ground that they were not properly qualified and because they express opinions clearly within the province of the court. Judge Mayer tersely says of such expert witnesses: "In the Southern District (of New York) we never allow an expert, since the new rules, to express his opinion as to the patentability, or construe claims for us. What we want him to do is to give us the mechanical construction, explain the technique of the alleged patented article or alleged infringement, etc., but never let them construe claims for us, nor do we let them express opinions as to invention or non-invention. We think that that is our duty." Under the rule permitting the court to deal with the costs of incompetent, immaterial or irrelevant depositions,66 some orders have been made taxing the expense of plaintiff, incurred in attending on the taking of an immaterial and irrelevant deposition of the defendant's witness.67 The plaintiffs are sometimes proving substantially all of their primâ facie case by depositions of witnesses residing more than one hundred miles from the place of trial, under notice given to the adverse party, and these depositions are used as the opening evidence at the trial before the court. This saves considerable of the court's time. In such instances, this evidence is taken before a commissioner, examiner, master or notary, under the statutes, as provided in the rules.68 A radical change is accomplished by the rules relating to cases 66 Federal Equity Rule 51. 67 Stillwell v. McPherson, Judge Ray (Unreported) (1914). going on the trial calendar after the time for taking depositions has expired.69 In the Southern District of New York, as an illustration, the clerk places an equity case upon the trial calendar twenty days after the filing of the answer, unless within that time an order is made permitting the taking of depositions under Rule 47, or affidavits under Rule 48, or notice be given to the clerk of the taking of depositions under the Revised Statutes. If such order is entered or notice given, the cause is not placed upon the calendar until the expiration of the time limited by Rule 56, provided both parties give this notice to the clerk, unless otherwise ordered, but in some unreported cases it has been held that the case will be put upon the calendar at the end of the time consumed by the plaintiff in taking depositions, if no such notice has been given by the defendant, and thus deprived the defendant of taking any evidence by deposition. This, however, is not the universal practice. In a recent case,70 Judge Chatfield considered a motion by plaintiff to take depositions, which he granted upon the showing made, saying: "The application denied. . . has been renewed upon additional papers, which are intended to comply with Equity Rule 56." The Court did say, however, that while the papers before him did not set forth in detail entirely satisfactory reasons showing inability to produce upon the trial the witnesses named, etc., and that the rule had not been fully met, still it had been substantially complied with, and, as the other parties would not be hurt, he would permit the testimony to be taken by depositions. The second year has seen substantial strides in the use of interrogatories under the new rules, although there is little uniformity in the decisions as to the practice of directing defendant to answer interrogatories. In patent cases the use of interrogatories is becoming particularly common. Frequent use is being made of them to get information from the defendant on the question of the matters of the alleged infringing article. Some of the decisions hold that when plaintiff has reasonable grounds of suspicion that defendant's machine or process is an infringement, plaintiff is entitled to have the interrogatories answered. Other cases hold that 69 Federal Equity Rule 56. 70 United Lace & Braid Mfg. Co. v. Barthels Mfg. Co., 217 Fed. 175, 176 (1914). the mere suspicion of infringement is not sufficient and that plaintiff must present reasonable grounds of certainty for infringement before defendants will be directed to answer interrogatories which involve a disclosure of defendant's process or apparatus. In the Northern District of Illinois the Court had before it a motion to strike out portions of the answer, and in holding that under the rules 71 interrogatories may be filed by either party requiring the other to state material matters relating to the nature of the case and the facts supporting it, but not mere evidence, said: "This Rule 58 was in substance taken from Order 31 of the English Equity Rules of Practice, which has been in force for a considerable time, and has been construed and applied in very many English cases. It is well settled by these decisions that the disclosure of evidence is not required. The nature of the case and the facts supporting it may be required to be stated. Mere evidence or facts tending to prove the nature of the case or the facts upon which it is based are quite generally held not proper to be inquired into. . . . The second, third, and fourth interrogatories inquire as to the opinion of the complainant as to the construction of the patent. This is a matter to be supplied by expert testimony in support of the contention of infringement, or the validity of the patent, or both. It is a matter purely evidentiary and one which within the English rule, and the proper construction of Rule 58 cannot be inquired into. The same considerations apply to interrogatories 5, 6, and 7, inquiring whether complainant has manufactured devices under its patent, whether it has any interest in other patents, and whether it considers defendant's device to infringe any such other patents. . . . The 8th and 9th interrogatories, inquiring whether complainant contemplates bringing other patent suits, and whether it had knowledge of one of the letters pleaded in the answer, should be treated in the same way. All of the interrogatories should be struck out except the first." 72 This decision has gone quite as extensively into what may be considered as proper interrogatories, particularly in patent causes, as any one that has been reported. Interrogatories are being used for numerous purposes, and the answers to them have been used as a basis for a successful motion to dismiss.73 "Federal Equity Rule 58; Luten v. Camp, 221 Fed. 424 (1915); Blast Furnace Appliances Co. v. Worth Bros. Co., 221 Fed. 430 (1915). 72 P. M. Co. v. Ajax Rail Anchor Co., 216 Fed. 634, 636 (1914). 73 Bronk v. C. H. Scott Co., 211 Fed. 338 (1914); 27 HARV. L. REV., 636. |