CHAPTER XVI DISCOVERY IN EQUITY STORY, COMMENTARIES ON EQUITY JURISPRUDENCE (13th ed. 1886) vol. 2, § 1483. EVERY bill in equity may properly be deemed a bill of discovery, since it seeks a disclosure from the defendant on his oath of the truth of the circumstances constituting the plaintiff's case as propounded in his bill. But that which is emphatically called in equity proceedings a bill of discovery is a bill which asks no relief, but which simply seeks the discovery of facts resting in the knowledge of the defendant, or the discovery of deeds, or writings, or other things in the possession or power of the defendant, in order to maintain the right or title of the party asking it in some suit or proceeding in another court. The sole object of such a bill then being a particular discovery, when that discovery is obtained by the answer, there can be no further proceedings thereon. To maintain a bill of discovery it is not necessary that the party should otherwise be without any proof of his case; for he may maintain such a bill, either because he has no proof or because he wants it in aid of other proof. But in general it seems necessary, in order to maintain a bill of discovery, that an action should be already commenced in another court to which it should be auxiliary. There are exceptions to this rule, as where the object of discovery is to ascertain who is the proper party against whom the suit should be brought. But these are of rare occurrence.1 LANGDELL, SUMMARY OF EQUITY PLEADING (2d ed. 1883) § 167. Ar common law, the admissions of a party to a suit were good evidence for the adverse party, but there were no means of compelling him to give admissions. Equity, however, held that there was at least as much reason for compelling a party to disclose what he knew material to a controversy, as for compelling a witness to do the same thing; and although a party was disabled, by interest, from testifying in his own behalf, this was no reason why he should not admit the truth in favor of his adversary. And when a party had made admissions, the common law did not inquire whether they had been made voluntarily or through the compulsory process of the court of chan 1 For a brief account of the procedural aspects of a bill of discovery, see Langdell, Summary of Equity Pleading (2d ed. 1883) §§ 167–181. Ac cery; and hence they were equally good evidence in either case. cordingly, the court of chancery has always entertained bills filed for the sole purpose of obtaining discovery to be used in a court of law; and such discovery is given in an answer, just as it is upon a bill for relief.1 NIXON v. CLEAR CREEK LUMBER CO. SUPREME COURT, ALABAMA. 1907. 150 Alabama 602. SIMPSON, J. The bill in this case was for a discovery, and for the injunction of certain judgments, until the amount of complainant's set-off could be ascertained and applied against said judgments.2 ... The able opinion of the judge of the city court of Montgomery, in equity, gives an interesting history of the doctrine of bills of discovery in equity, and reaches the conclusion that, inasmuch as this jurisdiction was originally assumed because of the inadequacy of the powers of courts of law, yet that, since the statutes have provided for the examination of parties, the effect has been to take away from courts of equity its ancient jurisdiction in that matter. In this conclusion we are not able to concur. It is a principle that has passed into an axiom of our laws that, when certain matters have been within the jurisdiction of courts of equity, subsequent statutes conferring like jurisdiction upon courts of law are merely cumulative, and do not deprive the chancery court of its original jurisdiction, unless the statute specifically does so. It is true, however, that upon this particular point there is a sharp conflict in the decisions of other states. Mr. Pomeroy, in his work on Equity Jurisprudence, states that where Codes of Civil Procedure have been adopted, by which the distinction between proceedings at law and in equity has been abolished, the method of equitable discovery has been "practically" destroyed; but he goes on to state that in states where separate tribunals of law and of equity are preserved "it has generally been held that the Legislature has not abridged nor affected the auxiliary equitable jurisdiction to entertain suits for mere discovery of evidence and production of documents, and that such equitable juris 1 Another reason for allowing bills for discovery lay in the "want of power of the Courts of Common Law to compel the production of deeds, books, writings, and other things which are in the custody or power of one of the parties, and are material to the right, title or defence of the other." 2 Story, Equity Jurisprudence (13th ed. 1886) § 1485. As to discovery in aid of foreign suits, compare Dreyfus v. Peruvian Guano Co., 41 Ch. D. 151 (1889), noted in 3 Harv. L. Rev. 92 (1889), with Mitchell v. Smith, 1 Paige 286 (N. Y. 1828), and Post & Co. v. Toledo, C. & St. L. R. R. Co., 144 Mass. 341, 350 (1887). 2 A detailed summary of the bill is omitted. diction still exists where not expressly abolished by the statutes." 1 Pomeroy's Eq. Jur. (1st Ed.) pp. 185, 186, § 193. He goes on to state this conclusion is not universal. He states in a subsequent section that "a suit for discovery will be maintained in aid of another cause in equity, *** or proceedings in any commonlaw court of general jurisdiction, *** which is, or was by its original modes of procedure, unable to compel the needed disclosure." Page 188, § 196. In section 230 the learned author is discussing only the principle that, when a court of equity has taken original jurisdiction for discovery in regard to a purely legal controversy, it will proceed to do complete justice by deciding the entire case; and he argues against the rule, as it existed both in this country and England, intimating that there never was any reason why the case should not have been left to the court of law to decide after the discovery had been accomplished, and finally expresses an opinion that "this particular doctrine" has been swept away by statutory enactments, and he is particular in his note to make it clear that his remarks are only as to this particular doctrine. - 1 Pomeroy's Eq. Jur. § § 223, 230, and note on page 238.1 Without expressing any opinion as to whether, even as to this particular doctrine, the learned author is as logical as he usually is, our own court has held the opposite view, as will be seen by authorities hereafter cited. As heretofore remarked, the cases in other jurisdictions are in conflict, and can be seen by reference to 15 Century Digest, under the title "Discovery," § 4, to 14 Cyc. p. 309, and to a note to Cargill v. Kountze Bros., [86 Tex. 386], 24 L. R. A. 183. But we think the best-considered cases, as well as the reason of the law, sustain the proposition that the statutory provisions do not interfere with the equitable jurisdiction in matters of discovery, unless it is so specially provided in the statute. Howell v. Ashmore, 9 N. J. Eq. 82, 93, 94; Shortwell's Adm'x v. Smith, 20 N. J. Eq. 79; Miller v. U. S. Casualty Co., 61 .N. J. Eq. 110, 116, 117. In our own state, in addition to the general statute making parties witnesses, section 1850 of the Code of 1896 provides (as did previous Codes) for filing interrogatories to the opposing party, and section 1859 (enacted December, 1894) provides for requiring the parties to produce books or writings in their possession or power. This general subject came before our court in 1872, and the court said: "We do not think that, because our present law of evidence enables the plaintiff to examine the defendant as a witness, his right to proceed in equity is thereby taken away."— Cannon v. McNab, 48 Ala. 99, 102. This court said again: "It is quite clear, however, that this 1 As to whether the plaintiff in a suit for discovery is entitled to relief other than discovery, compare 1 Pomeroy, Equity Jurisprudence (5th ed. 1929) §§ 223-230, with 1 Story, Equity Jurisprudence (13th ed. 1886) §§ 64k-74, 456. 2 Statutory provisions for discovery at law are further considered later in this book. See Ch. XIX, § 3, infra. well-established jurisdiction of equity in matters of discovery is not ousted, or in any wise affected, by the statutory changes in the common-law rules of evidence, by which parties to pending suits are authorized to be examined as witnesses in the courts of this state." Shackelford v. Bankhead, 72 Ala. 479. In neither of these cases was there any question about the production of a book, but the principle evidently was, just as in the cases from other states cited, that, although the statutes had provided a cumulative method by which the discovery could be obtained, yet the original jurisdiction remained in the court of equity.1 The decree of the court is reversed, and the cause remanded. SINCLAIR REFINING CO. v. JENKINS PETROLEUM PROCESS CO. SUPREME COURT OF THE UNITED STATES. 1933. 289 United States 689. CERTIORARI to the Circuit Court of Appeals for the First Circuit. MR. JUSTICE CARDOZO delivered the opinion of the Court. A bill of discovery in aid of an action at law was dismissed by the District Court, 56 F. (2d) 272, but upheld upon appeal by the Circuit Court of Appeals. 62 F. (2d) 663. The question is whether the bill is good upon its face. The respondent, Jenkins Petroleum Process Company, loaned to the petitioner, Sinclair Refining Company, then known as the Cudahy Refining Company, an experimental still for cracking petroleum oils to produce gasoline. By written agreement, any improvements developed as the result of the work of the petitioner's engineers and experts in making themselves familiar with the Jenkins apparatus or process were to belong to the respondent. The petitioner, or its predecessor, undertook, so far as it was able, to cause its employees to execute applications for patents in the United States and elsewhere in order to protect such improvements, and to assign the applications to the petitioner together with the improvements affected thereby. In January, 1921, the respondent filed a bill in equity for specific performance. Isom, an employee of the petitioner, applied for a 1 The remainder of the opinion, discussing further the Alabama decisions and statutes on discovery and dealing with the plaintiff's right to relief by way of equitable set-off, is omitted. As to equitable set-off, see 2 Story, Equity Jurisprudence (13th ed. 1886) §§ 1435-1437. 2 See Seeley v. Dunlop, 157 Md. 378, 382 (1929). patent on September 10, 1917, and when the patent was issued on November. 19, 1918, assigned it to his employer. The respondent made claim to the patent on the ground that it was an improvement of the Jenkins invention. After a trial upon the merits, the bill for specific performance was dismissed, the court holding that there was doubt whether Isom's invention was the outcome of his use of the Jenkins apparatus, or of independent thought and knowledge. 32 F. (2d) 247. There was an appeal from the decree to the Circuit Court of Appeals for the First Circuit. That court invoked the principle that to uphold a decree for specific performance there must be clear and convincing evidence, and not merely such evidence as would sustain a recovery at law. In that view the decree was af- firmed in so far as it dismissed the prayer for equitable relief, but the dismissal was coupled with a direction that the cause be transferred to the law side of the court, the plaintiff to have leave to amend by turning his cause of action into one for the recovery of damages. 32 F. (2d) 252. The action at law is now at issue, and the plaintiff prays for a discovery. It alleges in its bill that the evidence of the facts to be discovered is contained in voluminous books and documents which could not be inspected or proved upon a trial at law for damages without confusion and delay. Discovery is demanded as to the number of cracking stills constructed by the defendant under the Isom patent; as to the extent and time of operation; and as to the amount of gasoline and other petroleum products yielded thereby, with an inspection of the relevant designs and drawings. The District Court granted a motion to dismiss the bill, placing its decision upon two grounds, (1) that a bill of discovery will not lie when the facts to be discovered relate to damages only, and (2) that the value of the patents has no relation to the sales of the patented device, and that evidence of such sales would be inadmissible if offered. The Court of Appeals reversed, one judge dissenting. In the view of the majority of the court, the damages to be recovered in an action at law may be proved by resort to a discovery in equity, if the ancillary remedy is reasonably necessary to advance the ends of justice.2 A writ of certiorari prayed for by the defendant, has brought the case here. 1. The remedy of discovery is as appropriate for proof of a plaintiff's damages as it is for proof of other facts essential to his case. Help for the solution of problems of this order is not to be looked for in restrictive formulas. Procedure must have the capacity of flexible adjustment to changing groups of facts. The law of discovery 1 The soundness of this "principle" may well be doubted. See 9 Wigmore. Evidence (3d ed. 1940) § 2498. 2 A summary of the grounds of decision of the Circuit Court of Appeals is omitted. |