KENDALL OTHERS v. WINSOR

T.A. Jenckes, for the complainants.

The demurrer of the defendant is not well taken.

I. The ground for the discovery and relief prayed for, is not that there has been a change in the statute law of the state, by which parties can be witnesses in their own behalf, but because the facts stated in the bill disclose a clear case of license to the complainants from the defendant to operate the machines referred to, or an estoppel against him from setting up his patent obtained subsequent to the facts set forth, to the injury of the complainants in their use of said machines. The ground of relief being purely equitable, it was proper for the complainants to try their case at law, with such defences as they had to an action at law, before coming into a court of equity for relief. This they have done, and their legal defences have not availed them. The portions of the bill demurred to are statements by way of excuse to show why the grounds of relief in the bill were not taken at law, in case the court should think that they would have been tenable at law. It has frequently been determined that a party shall not have relief in equity after a full and fair trial at law, although a court of equity may have jurisdiction. Marine Ins. Co. v. Hodges, 7 Cranch, 332; Smith v. McIver, 9 Wheaton, 532. The complainants were bound to allege, therefore, not only facts to show a case for equitable relief, but the reason why those facts were not submitted to the court of law. This they have done in the allegations referred to. They do not ask to have the defendant enjoined from using the process against them, issued by the United States court. This he has done, and is now pursuing them in this court upon a bond given to obtain their liberty from the commitment upon the process of that court. This court clearly has power to grant that relief.

II. The complainants did not have a full and fair trial at law. The statements in their bill show, that they did not have such full and fair trial, and those statements are to be taken as if proven upon this demurrer. They are, —

1. The matters in defence were within the knowledge of the plaintiff and defendant only, and of no other persons.

2. The complainants could not compel a discovery from the defendant, such as is now sought here, because the United States circuit court has no jurisdiction over the parties to compel a discovery.

3. The parties could not be witnesses in their own behalf, nor could the complainants compel the defendant to become a witness.

4. The complainants were not in fault in failing to present to the circuit court proofs which they had not the power to produce.

III. The relief prayed for in no way interferes with the process, proceedings, or judgment in the circuit court. Those proceedings have spent themselves; and the plaintiff in that court has resorted to this jurisdiction for relief, and himself and the subject-matter of his suit are now within the exclusive jurisdiction of this court.

IV. Each case is to be tried under the law respecting the admissibility of testimony, as it exists at the time of trial. It was to the advantage of the defendant that the complainants could not be witnesses, and could not compel him to be a witness at the trial at law in the United States circuit court. It may not be to his advantage that all the parties are competent witnesses in this court. But all parties take the risk of statute changes in the law of evidence, as well as in other laws. The change may not be a sufficient ground for granting a new trial in a case at law; but it is a reasonable excuse in a court of equity for not having been able to present fully a defence in a case at law, in which a judgment has been rendered contrary to the equities between the parties. It is a sufficient ground of relief to allege, that the circumstances upon which the complainants' equities are founded, are peculiarly within the knowledge of the defendant, and that he could neither be compelled to testify, in the law court in which he sued the complainants, nor to answer a bill of discovery.

V. The interrogatories to the defendant do not call for evidence merely cumulative to that offered in the court at law. The allegation in the bill demurred to, which is the only place to which we can look for facts, states, that "although some evidence of the declarations and conduct of the defendant were offered to the jury, yet they (the complainants) were not able to prove the facts and declarations and license hereinbefore set forth for the reasons aforesaid," i.e. because "all the conversations between your orators or either of them and said defendant were with the defendant alone, and not in the presence of any other person." The declarations of the defendant to other persons tended to prove an abandonment of the invention to the public, as much or more than they tended to prove a license; and these declarations did not and could not refer to the conversations between the parties, and, under the language of the bill, cannot be so held to refer. The answers to the interrogatories in the bill do not therefore call for cumulative evidence.

VI. It is submitted that the case stated in the bill is clearly one for equitable relief, and that the demurrer admits directly the truth of the facts alleged, and impliedly admits that the discovery prayed for would sustain those allegations by the admissions of the defendant. Upon the case as it stands, therefore, the complainants are entitled to relief against the judgment sought to be enforced against them. The cases cited by the defendants' counsel have no bearing upon the issues now presented. Sawyer v. Merrill, 10 Pick. 16, was a motion for a new trial, so that one person sued as a tort feasor, who had been discharged by the verdict, might be a witness for another tort feasor, charged by the verdict. The court say that the new trial, if granted, would include both, and therefore that there was no weight in the reason assigned. Ableman v. Booth, has no analogy to the case at bar. We must look to the bill for the facts in this case, and not to the report of Winsor v. Kendall, in the supreme court of the United States. It is submitted that the defendant should answer over.

Thurston and Ripley, for the defendant.

I. A change in the statute law of this state cannot be a ground for a new trial in actions previously disposed of, while the law was otherwise, and consequently this fact cannot furnish a basis for any equitable relief. The ground relied on in the bill substantially is, that witnesses who were incompetent to testify when the case was tried, have now become competent. Sawyer v. Merrill, 10 Pick. 16.

II. The effect of compelling the defendant to answer this part of the bill would be to imply, that if the fact was found against him at the final hearing, the judgment of the circuit court of the United States could be interfered with by this court. Ableman v. Booth, 21 Howard, 507.

III. Admitting that the parties complainant would testify, as is asserted to be the fact in the bill, the court can see that the evidence would be only cumulative. Evidence was offered on the same controverted points at the trial. See Winsor v. Kendall, 21 Howard, 322.

IV. It would be idle, therefore, to compel a discovery of that which, if true, could not affect the judgment already rendered.

V. It is no ground for relief that the complainants in this suit could not, on account of the citizenship of the parties, maintain a bill of discovery in aid of the case in the circuit court. The plaintiffs could have made themselves competent if they had desired; and even without this, on the authority of Dunn v. Clark, 8 Peters, 1, the court would entertain an ancillary bill, it being in fact a part only of the pending suit.