In particular, the old rubber-stamp ob jection of "fishing expedition" raised by an infringer is no longer recognized, al though the privilege of trade secrets is still preserved. If t h e material called for is necessary t o solve an ambiguity in t h e complaint or to produce evidence in re sponse to a request for discovery of matter relevant to the issues, the burden must be met. Of vital importance in deciding t h e propriety of an interrogatory or deposition is its pertinence to the issue. T h e m a t e rial or statement requested must have a direct and immediate bearing upon the subject of the controversy. In a process infringement one may ask a defendant whether he uses a certain solvent or cata lyst or mode of operation, if this is part of the claim, b u t not how intermediates were obtained, what the properties of t h e end product are, or how its structure was deter mined. On the other hand, materiality must not be determined by narrow literal ism in reading t h e disputed claim. If the patent is for a process, a plaintiff might well be permitted to probe into t h e de fendant's apparatus and even blueprints. Rarely, the court will allow questions which will involve the interpretation or construction of a patent claim. Interrog atories are for the purpose of eliciting facts, not opinions. If a defendant in an infringement suit attacks the validity of t h e patent for insufficient disclosure or undue breadth of claim, the plaintiff is not permitted before trial to require t h a t this argument be substantiated by reasons. Such a statement calls for a speculative construction of the claims, which is to be decided at the trial itself. Where interrog atories are not directed to mere opinion b u t to facts based upon views and beliefs held by t h e defendant, broader latitude is allowed if, in t h e opinion of the court, m e plaintiff has good reason to assume tli a t the defendant is infringing his patent (Pierce v. Submarine Signal Co., 25 Fed. Supp. 557). Likewise, a defendant will not be com pelled to produce samples, documents, or other information if this kind of evidence can be obtained elsewhere in a satisfactory manner. But in one case at least (du Pont de Nemours v. Byrnes, 44 USPQ 13), the party charged with infringement was ordered to identify all raw and starting materials useful for it in manufacturing t h e controversial products, to give the name and formula and condition, and further to state whether the materials were mixed and in what manner and the sources from which they were purchased. I t was not, however, compelled to give the analyses because samples were furnished. Tangible
Clues
Demanded
Much will depend upon the prima facie evidence which a party can show in its original pleadings. T h e r e must be at least some tangible clue to call for a show of t h e inventor's hand. I t may be
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found in a, trace of solvent, discovered i n a saniiple, w h i c h solvent has been used in the p a t e n t process. Or it may be offered by m i n u t e impurities retained in the product and which will throw a light upon process s t e p s or s t a r t i n g ingredients. T h e use of a certain c a t a l y s t m a y sometimes betray itself by a tinge imparted to a substance, while physical characteristics like con sistency, particle size, and solubility, may be traced back to operating conditions.
In conclusion we m a y say t h a t the procedure of infringement discovery is subject t o highly equitable principles. While i t h a s been greatly liberalized in t h e interest of the p a t e n t owner, it will n o t p e r m i t t h e defendant t o be a n n o y e d or embarassed by unfair reconnoitering excursions. I t is equitably balanced between both sides. T h i s s t a t u s may give new h o p e to those who h a v e recently lost some confidence in o u r p a t e n t system.
Try the Public Library A "Vole from the Library Committee of the Division of Rubber Chemistry J. ο the chemist in a large research labo r a t o r y , b e it industrial or scholastic, it is no p r o b l e m to find t h a t article in an ob s c u r e journal. H e asks an obliging li brarian, a n d in due course receives the article or a photostat of it. i t is different with the chemist in the s m a l l laboratory who lacks both the tech nical library and t h e librarian, especially if he "works in a specialized field. He finds w h a t he can in t h e books and journals available to him a n d frequently contents himself w i t h an abstract of an article in which he is particularly interested. There are, no d o u b t , m a n y such chemists who feel restricted by the lack of an adequate tech nical library. This need not be so. L i b r a r i a n s are not magicians but they are very much interested in seeing that people g e t t h e magazines a n d books they need. Tîiey have devoted a great deal of energy a n d skill to making this possible. Special
Libraries
and Loans
+
X o the individual chemist the key is the local librarian who operates through interlibrary l o a n s and the special libraries. Jus?t how- this works can be illustrated by a specific example. IMr. McGillcuddy is a rubber chemist in a small t o w n of Indianola. Since he is of a scientific turn of mind and the town does not. keep him busy a t night, he h a s become interested in some of the more debatable phases of rubber chemistry and has even developed some theories of his own. From t h e ACS journals, the rubber trade joiirnals y Rubber Chemistry and Technology, t h e Bibliography of R u b b e r Chemi s t r y , a n d a few books he h a s derived considerable background and a list of references "which he wants to look up. At t h i s point h e is s t u c k for lack of a technical library. T h e Indianola Public Library is good b u t has nothing on rubber. M a c likes t o talk to Miss Moore, t h e librarian, so he decides to enjoy himself by spilling his woes t o her. This is just what he should have done. A l w a y s anxious to please a customer, M i s s Moore writes to the Special Libraries Association to see w h a t can be done. She is told t h a t the journals in question can p r o b a b l y be obtained through the Bierce
L i b r a r y at the University of Akron. H e r next move is to write to Akron t o see what they can d o . T h i s time she receives a list of available periodicals, the Union List of Serials. T h i s is flashed t r i u m p h a n t l y on M a c who now finds t h a t much of the world's literature on rubber, resins, and plastics is available t o him. He picks out a paper in Kàutschuk for I VJ26 which he h a d particularly wanted to read. On an interlibrary loan Grace obtains the journal from the Bierce Library a n d lends i t to M a c as a regular loan from h e r library. At the end of two weeks M a c r e t u r n s it t o her and she sends it to Akron The interlibrary loan and the union list a r e devices of long standing. Libraries on special subjects have been developing for a n u m b e r of years. T h e special library on r u b b e r chemistry is q u i t e new. Rubber
Division
Projects
Early in 1947 the Division of Rubber C h e m i s t r y decided to sponsor t h e developm e n t of t h e Rubber L i b r a r y a t the Univ e r s i t y of Akron. As a first s t e p , it undertook t o m a k e available a s complete a set of journals o n rubber a n d related subjects a s possible. This was made possible b y t h e cooperation of t h e big rubber companies: Firestone, General, Goodrich, Goodyear, a n d U . S. A combined union list of all t h e journals available in the technical libraries of these five companies a n d t h e University of Akron has been compiled. T h i s union list can be o b t a i n e d from D o r o t h y Hamlen, Bierce Library, Univ e r s i t y of Akron, Akron, Ohio. These j ournals a r e available o n interlibrary loans t o a n y recognized library. In operation, t h e Bierce Library first borrows t h e j o u r n a l from whichever cooperating library tias i t , also as an interlibrary loan, and t h e n relends it t o the r e q u e s t i n g library. In m a n y cases there are g a p s in t h e list of journals available. T h e Division of R u b b e r Chemistry is trying t o find a n d purchase all of these missing journals so a s t o make t h e list complete. T h e n e x t project, which is already s t a r t e d , is a Union L i s t of Books. I t is h o p e d t h a t this will develop i n t o a list of a l l books of value in the s a m e fields of r u b b e r , resins, and plastics.
CHEMICALAND
ENGINEERING
NEWS
