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of securing his legal advice touching an intended action, were held privileged. In Wheeler v. Le Marchant, 17 Ch. Div. 683, the questions as to whether certain written communications which had passed between the solicitor of the defendants and their surveyor, and between the surveyor and the solicitor, were privileged. The court held that they were not, except such as were prepared after dispute had arisen between plaintiff's and defendants, and for the purpose of obtaining information, evidence, or legal advice with reference to litigation existing or contemplated between the parties. Certainly nothing of these cases supports the proposition that a party may secure for a document not otherwise privileged the protection of the rule by handing it to his counsel. It is urged, however, that these papers are privileged because they are the result or product of confidential consultations between client and counsel. This argument applies, of course, only to the application and to the letters to the patent-office.
The principles deducible from the authorities cited, and from others which have been examined, seem to be these: Neither client nor coun)sel' may be asked as to mutual communications induced by their confidential relation, nor can either be required to produce any document emanating from one and transmitted to the other in the course of such confidential relation. The client cannot be required to produce letters written by him to his counsel, stating the facts as to which he wished advice, nor letters from his counsel embodying that advice, or even asking for further facts. If, as the result of the consultation between client and counsel, there is prepared some document, such as a form of contract or a notice or a letter, and that document is given by one to the other, and by him kept, it is probably privileged; its contents being confidential between client and counsel, and the document itself effectual only as an expression of the statement of the client as to the facts, and of the opinion of the counsel as to what kind of document it is desirable to prepare in view of the facts. Genet v. Ketchum, 62 N. Y. 626. But if the document thus confidentially prepared is not so kept, if the contract is by the client executed with some third person, or the notice is given or the letter sent to some outsider, its contents are no longer contined to the knowledge of client and counsel, and the party can no longer, as to a document which he 'has thus made public, claim that it is privileged because it is confidential. Such seems to be the rule fairly deducible from the decisions. Minet v. Morgan, L. R. 8 Ch.361; Pearse v. Pearse, 11 Jur. 52; Insurance Co. v. Schaefer, 94 U. S. 457; Covency v. Tannahill, 1 Hill, 33; Whiting v. Barney, 30 N. Y. 330; Randolph v. Quidnick Co., 23 Fed. Rep. 278; Foakes v. Webb, 28 Ch. Div. 2 Ford v. Tennant, 9 Jur. (N. S.) 292; In re Whitlock, 15 Civil Proc. R 204, 2 X. Y. Supp. 683; In re Mitchell, 12 Abb. Pr. 249.
The complainant, however, contends that the documents are prifileged, because they are communications passing between the applicant and the patent-office, touching an unissued patent. The existence of no such general privilege is recognized in any of the authorities cited. See, also, the exhaustive enumeration of authorities given in Whiting v. Barney and In
re Mitchell, supra; and also the cases cited in 1 Greenl. Ev. $S 250–252, and in Whart. Ev. $$ 604, 604a, 6046. Nor has any express legislation created it. By section 4902, Rev. St. U. S., congress has provided that carents and descriptions, specifications, etc., interfering with such caveats, shall be filed in the confidential archives of the patent-office, and preserved in secrecy; but there has been no such legislation as to pending applications.
The complainant relies upon a rule or regulation of the patent-office, as follows:
"(15) Cadeats and pending applications are preserved in secrecy. No information will be given without authority respecting the filing by any particular person of a caveat or of an application for a patent, or for the reissue of a patent, the pendency of any particular case before the office, or the subjectmatter of any particular application, unless it shall be necessary to the proper conduct of business before the office, as provided by rules 97, 103, and 108.”
That rule has been established under authority of section 483, Rev. St. U. S., which provides that “the commissioner of patents, subject to the approval of the secretary of the interior, may from time to time establish regulations not inconsistent with law for the conduct of proceedings in the patent-office.”
This rule, so far as it regulates the conduct of proceedings in the patent-office, is binding upon all the subordinates in that office; possibiy, also, upon the commissioner of patents himself, unless he obtains the assent of the secretary of the interior to its total or partial abrogation; but it is inoperative to change the rules of evidence in courts of justice, both because to that extent it wouid be inconsistent with law, and also because the effecting of such a change is in no sense the regulation of proceedings in the patent-office. Under a somewhat similar section (section 252) the secretary of the treasury, under direction of the president, is authorized to establish regulations, not inconsistent with law, to secure a just appraisal of imported goods. It, under such authority, he should make a rule that no examiner or assistant appraiser should give information to any one as to the methods by which he ascertained the composition or quality of such imported goods as he examined, such rule might be binding upon the subordinate as to any voluntary disclosures, but would certainly not excuse him from testifying in court if the sufficiency of his examination of the goods were made the subject of judicial inquiry.
The refusal of the company's officers to produce the documents in question under subpæna duces tecum cannot therefore be excused upon the theory that they are privileged communications. The specific relief prayed for on this application is for an order"That the complainant consent that the commissioner of patents furnish to the defendant's solicitors, at their expense, a certified copy of the file wrapper and contents of the pending application for letters patent filed in the patentoffice of the United States by Thomas A. Edison on the 15th day of December, 1880, the same being a division of an earlier application known as the * paper carbon application,'filed by the said Edison on or about December 11, 1879; or, in lieu thereof, at complainant's option, that complainant produce,
for the examination of defendant's counsel, and for use as evidence herein, if defendant be so advised, the full text, either original papers or copies, of said application, and of all correspondence in relation thereto which has passed between the patent-office and the said Edison, or the complainant herein, or bis or its attorneys.”
Sufficient ground for the making of such an order, if it be within the power of the court to make it, is not shown. It does not appear that the commands of the subpoena duces tecum will not be ample to obtain such evidence as that described in the motion. Merchants' Nat. Bank v. State Nat. Bank, 3 Cliff. 202; Bischoffsheim v. Brown, 29 Fed. Rep. 341. Certainly as to the letters from the patent-office, the originals of which are in the possession of the complainant, the writ of subpæna should produce the best evidence; and as to the copies of the application and of the letters to the patent-office, sufficient foundation having been laid for the admission of secondary evidence, they may be offered, when produced and identified, with the same effect as if they were originals. The notice of motion, however, also contains a prayer for general relief, and under that prayer the defendant may take an order committing the officers of the corporation for contempt in failing to obey the subpoena duces tecum.
HATCH et al. v. THE NEWPORT.
(Circuit Court, S. D. New York. November 18, 1890.)
1. ADMIRALTY-REHEARING_NEWLY-DISCOVERED EVIDENCE.
After a libel for collision had been determined against libelants and a stipulation entered into by both parties to dismiss the action, libelants asked a rehearing, on the ground of the newly-discovered evidence of passengers of the libeled steamship: Libelants had a list of these passengers at the trial, but did not know their residences. Their affidavit alleged that they had afterwards learned the residences of these passengers through the Spanish consul. Held, that a rehearing would not be granted, as no excuse was given for failure to find the passengers' residences by
the same means before the trial. 2. SAME.
Nor is it ground for such' rehearing that new evidence has become available through some of the steamer's crew, where libelants, before the trial, bad a full list of such crew, and knew which of them claimants would not examine as wit
nesses, but did not call any of them. 3. SAME.
Nor is it ground for such rehearing that libelants have discovered a witness who was in sight of the steamer the morning after the collision, where information of the whereabouts of such witness was obtained from the diary of a passenger, so that, if the passenger had been found before the trial, the witness might have been
found too. 4. SAME-EXPERT EVIDENCE.
Newly-discovered expert evidence as to the distance at which shore lights can be seen, and as to the effect of a change of helm in giving a list to a vessel, is no ground for such rehearing, as such evidence might have been obtained at the trial.
LACOMBE, Circuit Judge. After the final decision of this court upon motion for a rehearing, rendered April 9, 1889, (38 Fed. Rep. 669,) a stipulation to discontinue the action was on June 4, 1889, entered into by both parties. This was done at the request of the libelant, ostensibly to save the expense of entering and satisfying the decree of the circuit court, and the costs of district and circuit courts were thereupon paid by him. Had this stipulation not been made, it must be assumed that the claimant would have entered the final decree in regular course. Had such final decree been entered, this court would be precluded by its rule from granting a rehearing. Dist. Ct. Rule 155; Cir. Ct. Rule 136; Hogg v. The Annex No. 3, 27 Fed. Rep. 516, 35 Fed. Rep. 560, (E. D. N. Y.) Without passing upon the question whether, when the decree has been entered, the court may relieve a party from the operation of such a stipulation at any time, it would be sufficient for the disposition of the present motion to hold that the libelant, having, by means of the stipulation, induced the claimant to refrain from entering a final decree, should be held to the strictest application of the ordinary rules by which motions for rehearing are tested. Such motions are not granted where the new evidence which a party seeks to introduce could by the exercise of proper diligence have been produced on the trial. All the new witnesses named by the libelant may be divided into
1. Passengers. Before the trial the libelant had obtained a list of the passengers from the Spanish consul. This list gave no residences, and the detectives employed by him were able to discover very few of them, and one only was called as a witness and examined in this court. Several passengers are now offered as new witnesses. The affidavit, however, gives no satisfactory excuse for the failure to discover their whereabouts before. It states that, after the trial and decision, (and after a period of ill-health,) libelant's counsel “set about investigating whether there could not be some new evidence discovered,” and “following out the traces obtained, (from the Spanish consul's list and the efforts of the detectives before the trial,) he ascertained the whereabouts of additional passengers.” How this was done the affidavit does not set forth, but on the argument it was stated that information as to their addresses was obtained from the state department, through the bureau having charge of the issue of passports. It is no ground for reopening the case that this method of investigation did not occur to the detectives or to counsel till the winter succeeding its final disposition. It was available from the very inception of the case in the district court, and probably if it had been put in practice then would have resulted in discovering the proffered witnesses with much less trouble than when undertaken nearly five years later.
2. The Crew, It appears that several months before the trial in this court, and while additional testimony was being taken, the libelant was furnished by the claimant with a full list of the crew of the Newport. At that time the trial in the district court had advised him which of these witnesses his adversary did not intend to call. He did not call any
of them himself, (other than those examined in the district court,) nor did he apply for a continuance of the case to enable him to discover their whereabouts, apparently relying upon the inferences which he insisted should be drawn from their non-production by his adversary. As to these witnesses the affidavit merely states
"That, through sources of information which became known to deponent only after his recovery to health, in the winter of 1889–90, deponent got on the track of persons who were members of the crew of the Newport, besides those examined herein."
There is nothing to show that the same methods of investigation as energetically applied would not have enabled him to get on the track of those witnesses before the trial of the case in the circuit court.
3. A witness from a coastwise steamer that was in sight of the Newport the morning after the collision. Information as to the presence of such steamer was obtained from the diary of a passenger. Had the passenger been found before, this witness could also have been found.
4. Experts as to the distance at which shore lights can be seen; as to the effects of collision; and as to the effect of a change of helm upon the list of a vessel. Such evidence could of course have been obtained on the trials both in the district and circuit courts.
5. The chief officer of the schooner Parker M. Hooper, which, on February 23, 1884, (the night of the collision,) came in contact with a mast sticking out of the water, near the place of collision. No particular explanation is given in the affidavit as to the discovery of this witness, but, assuming that it was wholly fortuitous, there is not enough in his testimony to warrant the reopening of the case after this lapse of time. The motion is denied.
DUNCAN 0. THE Gov. FRANCIS T. NICHOLLS.
(Circuit Court, E. D. Louisiana. October 18, 1890.)
ADMIRALTY-REVIEW ON APPEAL.
In cases involving questions of fact only depending on conflicting evidence, and the credibility of witnesses, the circuit court in admiralty will not disturb the decrees of the district court, where there is no preponderance of evidence, and no additional evidence offered on appeal.
The following are the findings of the district court referred to in the opinion:
"This cause came on to be heard and was argued by proctors. On consideration thereof, the court is satisfied and finds that in law the steam-fug was in fault for the collision, which happened between her and libelant's lugger on the 28th of February, 1889, and therefore the libelant is entitled to recover the damages sustained by him in the premises, and amounting under the proof to one hundred and fifty dollars."