(dissenting).
I am unable to agree that the bill of discovery should be sustained in this ease when the only purpose is to procure.evidence on the question of damages in the action at law, and, further, since it is not clear that it is necessary to resort to it in order to procure the evidence held to be admissible in the'opinion.
The only cases in which the issue of wbeth-. er a bill of discovery was proper to obtain evidence solely on the question of damages was clearly before the court are Munger v. Firestone Tire & Rubber Co., 261 F. 921, and Loose et al. v. Bellows Falls Pulp Plaster Co. et al., 266 F. 81. In each of these cases the Circuit Court of Appeals for the Second Circuit refused to sustain such a bill, and in the Munger Case a writ of certiorari was denied by the Supreme Court, 252 U. S. 582, 40 S. Ct. 392, 64 L. Ed. 727.
The Munger Case was a patent infringement ease, and not grounded on a breach of contract as is the present ease; but, if a bill of discovery would ever lie to obtain evidence solely on the question of damages, .we think it would lie in case of an action at law to recover damages for infringement of a patent.
.The case of Loose et al. v. Bellows Falls Pulp Plaster Co. et al., supra, was an action at law on a breach of contract or license, in which ease the court said, at page 83 of 266 F.: “Equity will not aid law to aseex’tain, damages by entertaining a bill for discovery”—citing Munger v. Firestone Tire & Rubber Co., supra. “A fortiori will it not retain a bill when the discovery desix-ed has no other purpose than the liquidation of damages.”
In the ease of Bradford v. Indiana Harbor Belt R. Co. (C. C. A.) 300 F. 78, 81, discovery was refused on the ground that it was not shown that the plaintiff could not obtain all necessary information under section 724, R. S. (28 USCA § 636) the court saying: “It is not to be presumed that the district court would deprive him [plaintiff] of reasonable opportunity to examine them before the trial was concluded.”
In the ease of Pressed Steel Car Co. v. Union Pac. R. Co. (D. C.) 240 F. 135, the court sustained the bill, but clearly on the ground that it was essential in order to determine the liability of the defendant to ascertain whether the improvements pi’oteeted by the plaintiff’s patents were embodied in any of the cars constructed by or for the defexxdant, and also to what extent, if any, the defendant had to let bids for the construction of cars less than $10 lower than the plaintiff’s bid for the same ears. The plaintiff had eleven patents and the defendant 14,000 ears. That the evidence essential to determine lia^ bility also bears on the question of-damages is no objection to sustaining such a bill.
The earlier cases of Colgate v. Compagnie Francaise, etc. (C. C.) 23 F. 82, and Guyot v. Hilton (C. C.) 32 F. 743, do not hold that a bill for discovery will lie to obtain evidence of damages alone in an action at law. The complainant in the former case based its eomplaiixt, in part only, on the ground that discovery was necessary on the question of damages. The court evidently granted it as essential to enable the plaintiff to establish liability, and did not hold that a bill for discovery would lie solely to enable a plaintiff at law to prove damages. Neither does it ap*667pear that it was an issue in Guyot v. Hilton, supra. Carpenter v. Winn, 221 U. S. 533, 31 S. Ct. 683, 55 L. Ed. 842, goes no farther than to hold that a hill for discovery has not been abolished by the enactment of section 724, R. S. (28 USCA § 636), and may still be invoked in proper cases; but since the enactment of section 724, R. S., it should only be sustained in exceptional cases. Pressed Steel Car Co. v. Union Pac. R. Co., supra.
While there may be eases in the several states holding to the contrary under state statutes or Codes, and statements of text-writers based on sueh eases, the only authoritative federal decisions we have on the precise question here involved hold that a bill of discovery will not lie to obtain evidence solely on the question of damages. It was a clear-cut issue in the Hunger Case, and tho Supreme Court refused to disturb the ruling of the Circuit Court of Appeals.
Assuming that in exceptional eases a bill for discovery might lie in aid of proof of damages alone, where complicated questions would arise and require accounting, as in case of an action at law for infringement of a patent, I think there is not sufficient ground for sustaining such a bill in this case to obtain the evidence held to be admissible as to damages suffered by the plaintiff by reason of the breach of its contract with the defendant to eonvey the Isom patent to the plaintiff.
Certainly the power of the plaintiff to summon as witnesses the officers or employees of the defendant having knowledge of the number of cracking stills operated by the defendant, with all plans and blueprints of tho same, would give the plaintiff all the evidence held in the opinion to be admissible in this ease, and required for opinion evidence as to the value of the application for a patent, or of the patent itself. Inasmuch as the plaintiff in this ease cannot recover damages on the basis o f royalties or profits gained by the use of the patent in issue, tho need for preliminary examination of evidence admissible under the opinion of the court is not clear. At least, it does not appear that this is an “exceptional ease” where justice cannot be attained under an action for breach of contract by invoking section 724, or the right of the plaintiff to summon the officers and employees of the defendant as witnesses. United States v. Bitter Root Development Co., 200 U. S. 451, 475, 479, 26 S. Ct. 318, 50 L. Ed. 550.
Surely the officers managing the affairs of tho plaintiff corporation, and especially Ulysses Jenkins, who acted in an advisory capacity throughout the operation of the experimental still loaned to the defendant by the plaintiff corporation, which is engaged in the same kind of business as that of the defendant, must have knowledge of the nature of the Isom improvements from their expert knowledge of the oil cracking processes and from the application for the patent, and the patent itself, which are a part of the declaration in the action at law, and of the advance in the prior art, which was thereby made Neither the extent of the use by the defendant nor the profits gained from the use of the improvements, it is held in the opinion, are admissible on the question of damages. The opinion also holds that the plaintiff is only entitled to show general facts about the Isom patent, not specific instances of its use. I think with its power to summon the patentee, Edward Isom, and any other officer or employee of the defendant, and to compel the production of any plans or blueprints or books of the defendant under section 724, R. S., the plaintiff can prove its damages if it can show a breach of its contract. The burden is not on the defendant to satisfy the court that discovery “ought not to be ordered,” but on tho plaintiff clearly to show that it ought to be invoked. I think tho plaintiff has failed to sustain that burden in this case.
Unless it appears from the bill itself that the declaration in the action at law discloses an “exceptional case,” and a proper one for invoking this extraordinary remedy, I find no authority for retaining the bill until the defendant files its pleadings in the law action, or until occasion for discovery shall develop in the trial of the action at law.