Opinion of the Court.

In Re Judson, 3 Blatchf. 116, Fed. Cas. No. 7,563, the same learned judge said:

"I see no reason why any more stringent obligation should be imposed upon a witness in these outside examinations than is enforced in court. Before the court will adjudge a witness to be in contempt, or commit him therefor, it will require more than proof that he declines to respond to a question. It will inquire whether the question is relevant and material to the case or hearing, and also whether the witness is legally exempt from answering it."

In United States v. Tilden, 10 Ben. 566, Fed. Cas. No. 16, 522, it was held:

"I have

reached the conclusion that, under the law, it is competent for the court to issue a subpoena duces tecum to compel the production upon the examination of books and papers which would be competent evidence in the cause."

It will be noticed that the court did not hold that it had the power, by a subpoena duces tecum, to call for the produc tion of any papers, but only those "which would be competent evidence in the case." It follows necessarily, from this limitation of the court's power, that a subpoena duces tecum should not issue as of course, but only under some restrictions, such as a prior investigation into the materiality of the evidence called for.

In Bischoffsheim v. Brown, (C. C.) 29 Fed. 341, it was held that:

"The books, papers, and documents asked to be produced not being shown to be material or relevant, the motion for a subpoena duces tecum must be denied."

In United States v. Hunter (D. C.) 15 Fed. 712, there was a motion, as in this case, to quash a subpoena duces tecum which had been issued on an ex parte petition and served on a telegraph operator, commanding him to produce certain telegrams in his possession. The court, after stating what allegations are necessary in the application for the subpoena, gives the reason therefor as follows:

"In order that the court or judge ordering the subpoena may have some means of judging the relevancy of the testimony sought."

In Dancel v. Goodyear Shoe Machinery Co. (C. C.) 128 Fed. 753, 760, an application for a subpoena duces tecum

Opinion of the Court.

under section 863, Rev. St. [U. S. Comp. St. 1901, p. 661], was denied because it did not appear prima facie from the allegations in the petition that the documents called for were "material and necessary ", although in the petition it was stated that they were material and necessary. Judge Colt, who delivered the opinion in that case, after a very exhaustive review of the authorities on the subject, said:

"A party undoubtedly has the right to invoke the process of the court to compel the attendance of witnesses and the production of such papers as are material to his case; but neither the right of a party nor the power of the court extends beyond this. A party has no right, and the court has no power, to compel the production, either in court or before a magistrate, of the private papers of a witness which are not relevant and material to the case. Any practice which sanctions such a proceeding is unwarranted and [271] an infringement upon a fundamental personal right guarantied by the federal Consti tution. The courts have always recognized this protection to the individual secured by our organic law. Such recognition is seen in the distinction which is made between a subpoena ad testificandum and a subpoena duces tecum. The former is a process of right, while the latter is addressed to the discretion of the court. The discretion here does not mean that the court has power to refuse the compulsive production of a paper which is material evidence in the case, but that before compelling its production by a subpoena duces tecum it will sufficiently inquire into the matter to determine if the evidence appears to be material, and, if not satisfied on this point, it will decline to issue the writ."

In Crocker-Wheeler Co. v. Bullock (C. C.) 134 Fed. 241, a similar question was before the court, and it was there held that the facts sought to be proven by the books sought to have produced by the subpoena were not relevant or material to the issues in the cause, and that for this reason the witness had a legal right to withhold them.

The only cases cited to the court by the learned counsel for the complainant as opposed to these views and sustaining the contention of complainant that a mere allegation in the petition for the subpoena that "the said books and papers are material and necessary evidence in said cause" is sufficient, are United States v. Babcock, 3 Dill. 566, Fed. Cas. No. 14,484, and an opinion by Judge Finkelnburg in this case (C. C.) 148 F. 486. As Judge Finkelnburg practically

Opinion of the Court.

adopts Judge Dillon's views as expressed in the Babcock Case, it is only necessary to refer to that opinion, which was an oral opinion delivered by Judge Dillon, concurred in by Judge Treat. The great learning of that eminent jurist entitles his opinions to the very highest consideration, but they are not of binding authority. It will be noticed that Judge Dillon cites no authorities to sustain his conclusion, and in view of the fact that the decision was made in the midst of an important trial before a jury, and delivered orally, the learned judge probably failed to give it that careful consideration which he usually gave to his opinions. In fact, it seems this matter was not insisted on by counsel, for the learned judge says:

"But Mr. Shepley suggested in argument that there was no suffi cient showing that these papers were material, but we understood him finally not to insist on that point."

In Ex parte Brown, 72 Mo. 83, 96, 37 Am. Rep. 426, a very carefully considered case on that subject, the court expressly declined to follow that case, saying:

"The case of Babcock v. United States, 3 Dill. 567, Fed. Cas. No. 14,484, relied upon as an authority as to the sufficiency of the identification of the telegrams, supports the view it is cited to sustain; but, with the highest respect for the learning and ability of the judges who granted the order for the subpoena in that case, we cannot agree with them. Their opinion, delivered by Judge Dillon, is totally at variance with our convictions on the subject."

This decision of the Supreme Court of Missouri was cited with approbation and followed by the Supreme Court of the United States in Hale v. Henkel, supra, thus practically adopting the refusal of that court to follow the views of Judge Dillon in United States v. Babcock.

Section 869, Rev. St. [U. S. Comp. St. 1901, p. 665], although [272] applicable only to depositions taken under a dedimus potestatum, provides for authority to issue a subpœna duces tecum upon "such judge being satisfied by the affidavit of the person applying, or otherwise, that there is reason to believe that such paper, writing, written instrument, book or other document is in the possession or power of the witness and that the same, if produced, would be

Opinion of the Court.

competent and material evidence for the party applying therefor "—thus showing that Congress, in legislating upon this subject, has carefully restricted the power of the courts to cases in which the evidence is relevant and material.

The allegation of counsel in the petition that the evidence is material or relevant is but a conclusion of law. It is for the court to determine from the facts set out in the petition, or perhaps other proofs, whether the documents, when produced, will be relevant and material. In my opinion, in order to entitle a party to a subpoena duces tecum requiring a witness not a party to the action to produce books and documents in his possession, it is not sufficient to allege merely that the documents required are material or relevant to the issues; but the facts which will show the court that they are relevant and material must be set out, in order to enable the court to determine that fact.

Seeking the production of papers and documents for the purpose of finding out whether or not they contain information valuable to the party demanding them has been aptly denominated a "fishing examination," and is always regarded as oppressive, and as such denied. 2 Elliott on Evidence, § 1410; United States v. Tilden, supra. At the same time, the court, in passing on the question of materiality or relevancy, will not be governed by the strict rules of evidence governing the admissibility of evidence on final hearing. That will be left for determination at the hearing. It is sufficient if the facts set out in the petition or the proofs adduced show a prima facie case, or sufficient to enable the court to say that there is reasonable cause to believe that such evidence is relevant or material; or, as stated by Judge Colt in Dancel v. Goodyear Shoe Machinery Co., supra:

"The court will not finally determine the question of materiality on such application, but it must be reasonably satisfied that the evidence is relevant and material."

From the allegations in the petition for the subpoena duces tecum, the court is unable to determine whether such is the fact, and for this reason the order for the subpoena was improvidently granted, and the motion to quash is sustained, without prejudice to the filing of another petition.

Syllabus.

[358] RUBBER TIRE WHEEL CO. v. MILWAUKEE RUBBER WORKS CO.

(Circuit Court of Appeals, Seventh Circuit. April 16, 1907.)

[154 Fed. Rep., 358.]

PATENTS-SCOPE OF MONOPOLY GRANTED-EFFECT OF STATE STATUTES.— A state statute cannot interfere with the monopoly granted to a patentee and his assignees under the federal laws." SAME POLICY OF PATENT LAWS.-The public policy declared by the patent laws is that it is for the benefit of the public to stimulate invention and that inventors shall publish their inventions, and to that end, and in consideration of such publication, to become effective at the end of 17 years, they insure to a patentee in the meantime absolute protection in the right to exclude every one else from making, using, or vending the thing patented without his consent.

[Ed. Note. For cases in point, see Cent. Dig. vol. 38, Patents, §1.] SAME-LICENSES-LEGALITY OF CONDITIONS.-Use of a patented invention cannot be had except on the inventor's terms, and the requirement that a licensee join other licensees in a combination or pool to control the prices and output of an innocuous patented article is not in violation of the Sherman anti-trust act of July 2, 1890 (26 Stat. 209, c. 647, § 1 [U. S. Comp. St. 1901, p. 3200]). Patented articles, unless and until they are released by the owner of the patent from the dominion of his monopoly, are not articles of trade or commerce among the several states within the meaning of such act, because they are not articles in which the people are entitled to freedom of trade.

SAME-DECREE ADJUDGING INVALIDITY-SCOPE AND EFFECT.-A suit for infringement of a patent is not a proceeding in rem, and a decree of a Circuit Court of Appeals in such a suit adjudging a patent void is binding only on the parties, and does not affect the validity of a license contract subsequently made between the owner of the patent and others, which is enforceable as fully and to the same extent in the circuit in which such decree was rendered as elsewhere in the United States.

[359] SAME-LICENSE CONTRACTS-LEGALITY.-A system of contracts between the owner of a patent for rubber-tired wheels and its licensees, fixing uniform prices and the percentage of the whole output which should be made and sold by each licensee, and providing that the business of all should be supervised by commissioners appointed by the licensor, is not rendered invalid by a provision for the accumulation of a fund by such commissioners

a Syllabus copyrighted, 1907, by West Publishing Co.