Carnegie Steel Company v. Bell Bros. Ld.

the prior users, but the Defendants objected to produce them on the ground that they related solely to the case of the Defendants and not to the case of the Plaintiffs and did not in any way tend to support or prove the Plaintiffs' case or to impeach the case of the Defendants. The Plaintiffs applied for an Order, 5 first, that the Defendants should state on affidavit whether documents therein described, namely Works' books containing entries relating to the processes used by the Defendants since the date of the Patent, were or had been in their possession or power, and, secondly, that the Defendants should be ordered to produce the books, reports, and drawings above mentioned. The application 10 was adjourned into Court. Held, that the Defendants, in stating that the documents all related to the prior users, necessarily stated that they related to the Plaintiffs' case, and that the documents ought to be produced; and that although the Plaintiff's had not specified the documents alleged to be in the Defendants' possession, yet as the Defendants had admitted the possession of 15 certain documents of the class sought to be discovered and their relevancy, they ought to make a further affidavit of documents, with liberty to take objections to production. Leave was given to the Plaintiffs to amend the Summons, and leave to appeal was given to the Defendants. The Defendants appealed.

Held, that the appeal must be allowed on the point as to the production of 20 documents and dismissed on the point as to a further affidavit of documents. No costs of the appeal were given.

On the 2nd of August 1905 the Carnegie Steel Company commenced an action against Bell Bros. Ld. and Dorman, Long & Co. Ld for infringement of Letters Patent (No. 5506 of 1900) granted to Oliver Imray for "An improvement in the 25" manufacture of open hearth steel," the Patent being then vested in the Plaintiff Company. The writ was amended, pursuant to an Order dated the 9th of January 1906, on the 10th of January 1906, by joining Oliver Imray as a Plaintiff.

The Plaintiffs having delivered a Statement of Claim and Particulars of 30 Breaches, the Defendants by their Defences (inter alia) alleged that the Patent was invalid by reason of the matters appearing in the Particulars of Objections therewith delivered.

The Particulars of Objections alleged (inter alia) :-(2) That the alleged invention was not new at the date of the said Letters Patent, but had been pub35 lished prior thereto. (C) By the public user in the manufacture of steel of a process substantially the same as the process described and claimed in the Specification of the Letters Patent sued upon. The particulars of the said user were, so far as material for the purposes of this report, as follows:-(a) In October and November 1894 at the Britannia Iron Works, Middlesborough, by 40 the Defendants, Dorman, Long & Co. Ld. (b) In May 1897 and onwards until September of the same year at the Roseberry Steel Works by the Defendants, Dorman, Long & Co. Ld. (c) In the month of June 1898 and onwards for some months at the Clarence Iron and Steel Works, Middlesborough, by the Defendants, Dorman, Long & Co. Ld. (d) In the month of November 1898 45 and thereafter onwards until after the date of the said Letters Patent at the said Clarence Iron and Steel Works, Middlesborough, by the Defendants, Dorman, Long & Co. Ld.

On an application by the Plaintiffs each of the Defendants was ordered to file an affidavit of documents by their secretaries or other proper officers. In the

Carnegie Steel Company v. Bell Bros. Ld.

second part of the affidavit sworn by Ralph Jameson, the secretary of Defendants Dorman, Long & Co. Ld., were scheduled. "B. Certain manuscript books "containing records as to the charges introduced and analyses of products and "certain reports and drawings, which said books, reports, and drawings are "numbered in my handwriting, R. J. 1 to R. J. 9 inclusive, and are tied up 5 "together in a bundle marked C v. B, and all of which relate to the prior users referred to in paragraph 2 (C), (a) to (d) inclusive, of the said Particulars "of Objections."

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In the second paragraph of this affidavit the deponent said: “ Further, to "the best of my knowledge, information, and belief the documents, specified 10 "under B in the said second part of the schedule, relate solely to the case of the "said Defendants and not to the case of the Plaintiffs, and do not in any way "tend to support or prove the Plaintiffs' case or to impeach the case of the "said Defendants, and the said Defendants accordingly object to produce "the same."

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The Plaintiffs applied under a Summons for further directions for an Order— (1) That the Defendants and each should state on affidavit whether the documents thereinafter specified were or had at any time been in their possession or power, and if and when they parted with same, and what had become of same, viz.: Books containing entries of all charges introduced into the Open 20 Hearth Furnaces at the respective Works of the Defendants, and books containing entries of the analyses of the products of such charges. Both of such documents relating to Open Hearth Steel Furnace charges and analyses from the date of the Letters Patent sued on until the date of the writ in this action. (2) That notwithstanding the claim for privilege made by the Defendants 25 Dorman, Long & Co. Ld. in their affidavit of documents, the said Defendants should be ordered to produce for the inspection of the Plaintiffs the documents specified under "B" in the second part of the schedule to the said affidavit.

The Summons was adjourned by the Master to the Judge in Chambers, and further adjourned by the Judge in Chambers into Court.

The Summons came on for hearing before Mr. Justice KEKEWICH on the 15th of December 1906.

Walter K.C. (instructed by A. J. Greenop & Co.) appeared for the Applicants; H. A. Colefax (instructed by Williamson, Hill & Co.) appeared for the Respondents.

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Walter K.C. for the Applicants.-This is a Summons in an action for infringement of Letters Patent. Dealing with the second part of the Summons first, whether the documents for which privilege is claimed assist the Plaintiffs' case or not, and do not harm the Defendants' case, must depend on the construction of the Specification, and the secretary, unless he is a technical person, cannot make 40 the affidavit in the form of Minet v. Morgan (L.R. 8 Ch. 361), so as to bring it within the practice, without stating on what his belief is founded. Order XXXI., Rule 19a, paragraph 2, states that the Court or Judge may inspect the document for the purpose of deciding as to the validity of the claim of privilege. [KEKEWICH J.-Williams v. James, before Jessel M.R., is the only case in 45 which I know of that course having been followed on an interlocutory application.] Particulars of Objections are to let the plaintiff know the case he has to meet. If this was the case of the only copy in existence of a Specification or book the Defendants might similarly have claimed privilege on the ground that it did not in any way tend to support the Plaintiffs' case or to impeach the case 50 of the Defendants, and Plaintiffs might go into Court knowing nothing at all about the documents, although on their examination and construction the Defendants' contention might prove to be wrong. There is nothing inherent in the nature of the documents for which privilege is claimed; they merely relate to prior user of the invention. There is no valid claim for protection unless the 55 affidavit is made in a matter which the secretary of a company is capable of dealing with or unless he states the foundation of his belief, it being a question

Carnegie Steel Company v. Bell Bros. Ld.

of construction of a Specification which is a matter of considerable difficulty. [KEKEWICH J.-If the documents relate to prior user I do not see at present how they cannot be relevant to the Plaintiffs' case.]

Colefax for the Respondents on second part of Summons.-It is perfectly true 5 that these documents relate to prior user, which, primâ facie, is part of our case and not of the Plaintiffs' case to begin with, although no doubt ultimately it concerns them. If the Plaintiffs could break down the claim of privilege, admitted to be in common form, it would be on the words, "They do not in any way "tend to support or prove the Plaintiffs' case, or to impeach the case of 10" the Defendants," and they have not come within measurable distance of doing that. There is only a suspicion in the minds of the Plaintiffs that there may be something in these documents which impeaches the case of the Defendants. There are plenty of cases supporting this plea of privilege, e.g., Morris v. Edwards (L.R. 15 App. Cas. 309). The decision in the House of Lords was 15 that, in an action for recovery of land, an affidavit of documents which stated that the defendant had in his possession certain documents, numbered and tied in a bundle and marked, and that he objected to produce such documents on the ground that they related solely to his own title and did not in any way tend to prove or support the title of the plaintiffs was sufficient, and it was not 20 necessary to allege that the documents did not impeach the defence. The Plaintiffs want to look at these documents in order to see whether they do not impeach the Defendants' case upon prior user. Of course it is open to your Lordship to see them. It is absolutely established that these documents are such as to come within the claim of privilege. One can claim privilege for 25 documents which are not evidence at all. The Plaintiffs have not interrogated, but are seeking to break down a claim of privilege which, I submit, cannot be broken down. They cannot do it, I submit, unless they can show conclusively to the Court that the claim cannot be rightly made because of the nature of the document in respect of which it is made. Minet v. Morgan (L.R. 8 Ch. 361) 30 was followed in Bewicke v. Graham (L.R. 7 Q.B.D. 400) by the Court of Appeal, where the claim had passed away from the original one in respect of title. Budden v. Wilkinson (L.R. (1893) 2 Q.B. 432) is another case. affidavit made must be taken as true. [Walter K.C.—I have not attempted to deny it.] The whole point is that the Plaintiffs are seeking upon, at the 35 most, a suspicion, to suggest that the facts as set forth in this plea are not true. With regard to the person who made the affidavit, I submit nothing can arise upon that. It was made by the proper officer, no doubt after consulting the

Company upon the case.

The

KEKEWICH J.-This is an important question of practice, and yet it resolves 40 itself to my mind into so very short a point that probably it will not be of much use as regards the general practice of the Court. Mr. Colefax has properly suggested that the Plaintiffs might have interrogated. Perhaps they might. Perhaps they might have insisted in some way upon further Particulars. I do not say that any application for interrogatories or for further Particulars would 45 have been successful. I do not propose to get rid of the case on any ground of that kind. I will decide the question of substance, namely, whether the Plaintiffs are entitled to see the documents for which privilege is sought on the present materials-those latter words I think being of great importance. The first thing I bear in mind is that this is a case for infringement of a Patent, and, 50 passing over all other Particulars of Objection, prior user is set up; and there are six instances of prior user alleged in the Particulars of Objections. That being so, the Defendants through their secretary make an affidavit of documents. It has been suggested that the secretary is not a proper person to make this affidavit. I cannot follow that. The Defendants are a Corporation and have 55 to make an affidavit by the proper officer. Unless it is shown to the contrary, the secretary seems to me to be the proper officer for the purpose of making that affidavit, even though the matters may be of a technical character with

Carnegie Steel Company v. Bell Bros. Ld.

which he is unacquainted. The practice of the Court admits of a plaintiff or defendant challenging the affidavit of documents made by an officer who is not the proper officer. There is a means of doing that, and I have known those applications made and made successfully; but there is nothing of that kind before me, and I must take it that the secretary, whoever he is, and however 5 ignorant of Patent law or any other law he may be, is still, until challenged in a proper way, the proper officer. That being so, it follows as a matter of course that all he has to do is to swear to the best of his knowledge, information, and belief. There is no occasion for him to say how he obtained either one or the other. He swears that "the documents specified under B in the second 10 half of the schedule relate solely to the case of the said Defendants and not "to the case of the Plaintiffs, and do not in any way tend to support or prove "the Plaintiffs' case, or to impeach the case of the said Defendants, and the "said Defendants accordingly object to produce the same." That is an unanswerable statement according to the whole of the authorities and the 15 practice of the Court including Lord Halsbury's statement in the House of Lords in Morris v. Edwards. That statement must be accepted; it cannot be answered by another affidavit; but you may turn to the affidavit and the documents as described under B to see whether the statement in the affidavit, which is sworn to, coincides with the description of the documents there given. If there 20 is any inconsistency between them you may comment upon that and argue that notwithstanding the oath which you cannot contradict the deponent is in error. It seems to me that he has himself stated here that he is in error. He mentionsnot specifying it in any way, and I am not deciding any question of that kind— certain manuscript books containing records of the charges introduced, and so 25 forth. I said they are not specified, but however, I think they are intended to be because it says, "R.J. I to 9 inclusive tied up together." I am not sure how that applies to all of them, but there are a great many documents mentioned, and then he adds this, "all of which relate to the prior users referred to in” the paragraph of the Particulars of Objections to which I referred just now. 30 They all relate to those prior users. Of course they would not be in the affidavit of documents at all unless they were relevant to the question in issue between the parties; and he states in the body of the affidavit that they relate solely to the case of the Defendants; but then he adds something to that, viz., that they relate to prior user. Now it is conceivable-I do not wish to teach the 35 Defendants their strategy-that these documents contain a letter or report from some outsider showing that he is prepared to prove one of these prior users. If there is such a document as that it is not only possible but likely that the Defendants will not be obliged to produce it because it might be their evidence -not document but evidence, a distinction which though very well recognised 40 is extremely difficult to follow; or it might come under another class of case well established that any information obtained for the purposes of defence, even though not directly through the solicitor, is really protected on the broad ground that the Defendants must be at liberty to collect their materials for defence by themselves without being supervised by the Plaintiffs. Defences of that kind 45 may well be open to the Defendants. It seems to me that when he says that they relate to the prior user referred to there he necessarily says, contradicting his statement in the body of the affidavit, that they relate to the Plaintiffs' case; that is to say they relate to what he set up as an objection to the Plaintiffs' case and which it is essential that the Plaintiffs should know unless they 50 are debarred from doing it by some Rule. It seems to me these documents are part of the Particulars of Objections. It, therefore, would not be right for me and certainly would be quite impossible for me to go into the question of how these Particulars of Objections are supported, but when you take such things as analyses of products and technical documents of that kind 55 they are all part of the Particulars of Objections. I do not say the Particulars of Objections ought to be more full; probably they are sufficient as they stand;

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Carnegie Steel Company v. Bell Bros. Ld.

but if these are part of the Particulars of Objections, and if the documents relate to the Particulars of Objections in that sense (I cannot see how they can relate to them in any other sense) they are really supplemental to those Particulars of Objections and ought to be produced, it being in a case of this 5 kind essential to a plaintiff that he should know, not how the case made against him is going to be proved, but what the case against him is. I have already said it is extremely difficult to draw the line; but it seems to me that here the Defendants have in effect said-"We can prove or hope to prove our Particulars “of Objections as regards prior user by these documents; these documents — " in other words-are part of our Particulars of Objections; when you see those you will be convinced-that is their view-and the Court will be convinced "that there has been prior user." I think it would be a very mischievous thing if I allowed this case to go to trial with enormous expenses incurred on either side when by production of some of these documents the Plaintiffs may 15 be convinced either that they have a good case or that it is useless to go on ; that is to say, a good case as regards prior user, or that it is useless to contest that part of the case, and the sooner they are out of the litigation the better. I said this case is of a peculiar character because I have this unusual statement that they relate to prior user. As at present advised-I have not heard Mr. 20 Walter in reply-if those last two lines had not been in the affidavit I should not have assisted the Plaintiffs, but as they are I do so.

Before coming to the other part of the Summons I think Mr. Colefax ought to be at liberty to make a further affidavit if so advised. I think the Order for production ought to be unless within a certain time he shows a case to the 25 contrary.

Colefax.-I am obliged for the concession, but I am going to ask your Lordship for leave to appeal.

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KEKEWICH J.-Yes, I will give leave.

Walter K.C.-The other part of the Summons is under Order XXXI., Rule 30 19a (1) with regard to specific documents. An affidavit by the Plaintiffs' solicitor states that the affidavits made by the Defendants had not disclosed books containing the charges introduced into the furnaces and the analyses of the products, and the foundation for his belief in the existence of such books is that he has been told by persons to be called as witnesses that the Defendants 35 have kept such books since the date of the Plaintiffs' Letters Patent. In answer, the general manager of the Defendants Messrs. Dorman, Long & Co. says: I do not deny the existence of some books of the nature referred to. To disclose the said books would seriously prejudice the respective Defendants "in their trade and business," and so on. The only question is whether or 40 not these are specific documents within Order XXXI., Rule 19a. You must define the species of books and not only the genus; you need not describe the cover, if you actually describe the contents. Some cases have been decided under paragraph 3 of this Rule (White v. Spafford L.R. (1901) 2 K.B. 241; and Graves v. Heinemann 18 Times Law Reports 115). I do not know 45 by what names these books are known to the Defendants, but I have specified them in my affidavit so that they may identify what books they are. The Defendants agree that they have in their possession the specified books, and I ask that they should make an affidavit under Order XXXI., Rule 19a. I cannot ask for their production because I have not seen what they are.

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KEKEWICH J.-Mr. Colefax, I do not require you to answer the application as it stands, but, having regard to your affidavit, I wish you to consider whether you are not bound to make a further full and sufficient affidavit of documents. Colefax. This is a difficult point which I believe has never been thrashed out in Patent actions. It continually arises in chemical cases where records 55 are kept as to what goes on in Works, and, although they in a sense bear on the question of infringement, I believe the Works' books are never shown. I conceive the principle of it is this-as regards discovery the plaintiff is not