evidence taken under it, may be received in any other.9 Evidence admissible at law only under a special notice cannot be introduced in equity unless the same notice has been given by the answer.10

§ 1128. Method of Producing Evidence in Equity: Objections: Exceptions.

When the trial of an action in equity is conducted in open court, whether with or without a jury, the methods of offering and objecting to evidence follow those which are pursued in courts of law. But when the testimony is taken by deposition, according to the usual practice in courts of equity, different rules prevail. In such cases the court fixes a period within which each party shall complete his evidence, and appoints some proper officer or other person as an examiner to receive the testimony and transmit it to the court. Under this order, if the plaintiff fails to take his evidence within the time prescribed, and does not apply for an extension, the court may proceed with the cause and determine it upon the pleadings as they stand.2 Evidence taken after the appointed time will

1928.

(1883), 15 Fed. Rep. 749; 23 O. G. set up in equity in the answer, or evidence concerning them is inadmissible, see §§ 1114-1116, and notes, ante.

That the defendant does not admit his infringement by accepting service of an injunction, giving bond, and acknowledging the validity of the patent and the plaintiff's title, but the presumption arising from these acts may be rebutted, see Byam v. Eddy (1853), 24 Vt. 666; 2 Blatch. 521.

That a bill perpetuam rei memoriam to take evidence for the defendant of a witness over ninety on a matter twelve years before the patent issued, if the plaintiff will not sue at once, is proper, and the evidence thus taken in a Federal court is admissible in any other Federal court, see New York & Baltimore Coffee Polishing Co. v. New York Coffee Polishing Co. (1881), 20 Blatch. 174; 9 Fed. Rep. 578.

10 That the statutory defences of which notice is required at law must be

§ 1128. Equity Rules, 67-71. That affidavits cannot be entitled in the cause before the bill is filed though they may be taken, see Baldwin v. Bernard (1872), 5 Fisher, 442; 2 O. G. 320; 9 Blatch. 509, note.

That affidavits not entitled in the cause are mere extra-judicial oaths and not receivable, see Buerk v. Imhaeuser (1876), 10 O. G. 907.

That when expert evidence is desired an application to put it in must be made before the first hearing, see Hitchcock v. Tremaine (1872), 1 O. G. 633; 5 Fisher, 537; 9 Blatch. 550.

2 That if the plaintiff fails to take evidence within the prescribed time, and does not apply for an extension, the court will proceed to determine the case on the pleadings as they stand,

be considered, unless a motion to suppress it is presented; but if objected to the court will ordinarily reject it, though where no injury could result to the opposing party, it may be allowed to remain. Inadmissible evidence must be objected to when it is offered before the examiner, if the adverse party is then present, and the objection must be entered on the record of the testimony to be transmitted with it to the court.

see Irwin v. Meyrose (1881), 2 McCrary, will be admitted on condition that the 244; 7 Fed. Rep. 533.

objection must specifically state the grounds on which it rests, and every ground not stated will be waived.5 Evidence not objected to can be employed only for purposes for which it is legally admissible. Objections to the competency of witnesses, or to their introduction under the pleadings as they are framed, or to the authenticity of documentary evidence, must be fully disclosed in order that, if possible, the obstacle may be removed.7 When the record of the testimony with the objections is returned to court, the inadmissible evidence may be struck out on motion; or if the inadmissibility arises from the want of proper averments in the bill or answer, the defects may be amended and the evidence may be then received or the cause sent back to the examiner for a repetition of the testimony.8 A motion to suppress the evidence of a

5 That a general objection to evidence is not considered unless the ground of objection is specified, and if the ground of objection is specified all other grounds are waived, see Fischer v. Neil (1881), 19 O. G. 603; 6 Fed. Rep. 89; Brown v. Hall (1869), 3 Fisher, 531; 6 Blatch. 401.

6 That evidence not objected to can only be used for the purpose for which it is admissible, see Zane v. Soffe (1880), 2 Fed. Rep. 229.

That under a general denial of the patentee's priority evidence of prior use taken without objection is competent at the final hearing, both as to the state of the art and the priority of the patent, see Zane v. Soffe (1884), 110 U. S. 200; 26 O. G. 737.

7 That an objection to the examination of a witness must state specifically the grounds of the objection so that it may be removed if possible, see Woodbury Patent Planing Mach. Co. v. Keith (1879), 101 U. S. 479; 17 O. G. 1031; 4 Bann. & A. 100.

8 In Allis v. Buckstaff (1882), 13 Fed. Rep. 879, Dyer, J.: (884) "It was held in Roberts v. Buck, 6 Fisher, 325, that where evidence of anticipations not set up in the answer had been taken,

and a motion was afterwards made to amend the answer, an amendment would not make that evidence admissible which was taken under objection before the amendment. After all, I suppose it to be discretionary with the court in such a case, especially after the objecting party has fully cross-examined the witnesses and taken rebutting proofs, either to let the testimony stand in the case, or to strike it out and permit the defence to take the testimony anew under the amended an

swer.

So far as the state of the case in Roberts v. Buck is disclosed, in the opinion of the court there is ground for the inference that the objecting party stood on his objection and elected not to cross-examine the witnesses or to offer rebutting proofs. In the case at bar objection was made to the examination of the witnesses, but there was full cross-examination, and proofs in rebuttal of that particular evidence were offered, and I think it is a proper exercise of discretion to let the testimony, which is objected to as irregularly taken, stand in the case." 22 O. G. 1705 (1707).

Further, that the pleadings may be amended and the evidence allowed to § 1128

witness, on the ground that he was mistaken in its details, will not be entertained if the examination was in due form and after proper notice. No evidence can be used in argument before the court unless presented to the examiner and appearing on the record, except such documents as are equally accessible to both parties, and whose connection with the controversy is so apparent that their production by one can operate as no surprise upon the other.10 Upon the motion of either party, for sufficient cause, the court may refer the record back to the examiner for the introduction of additional evidence or the re-examination of the former witnesses, and in such reference the testimony must be limited to the points

stand, see Babcock v. Pioneer Iron by agreement of the parties and where Works (1888), 34 Fed. Rep. 338; Forbes the omission of notice was inadvertent v. Barstow Stove Co. (1864), 2 Clifford, and the plaintiff was not taken by sur379. prise, see Roberts v. Buck (1873), 6 Fisher, 325; 3 O. G. 268; Holmes, 224.

That if a witness is objected to before the examiner on the ground that the notice is imperfect, the notice must be amended or the evidence though taken will not be considered, see Kiesele v. Haas (1887), 32 Fed. Rep. 794.

That evidence of prior use taken against objection before the examiner, without due notice or answer, will be struck out by the court, see Bragg v. City of Stockton (1886), 11 Sawyer, 597; 27 Fed. Rep. 509.

That where a witness's name was not stated in the answer but his application for a patent was referred to, a motion to strike out his evidence will be sustained, see Decker v. Grote (1873), 6 Fisher, 143; 3 O. G. 65; 10 Blatch. 331.

That evidence of prior use, &c., given by persons not named in the answer, will be considered on the hearing unless a motion is made to strike it out, although it was objected to when taken, see Elm City Co. v. Wooster (1873), 4 O. G. 83; 6 Fisher, 452.

That a motion to suppress testimony, on the ground that the witness was mistaken as to the occasion named, is not allowed if the examination was in proper form and after due notice and on oath, see Fischer v. Hayes (1881), 20 O. G. 242; 6 Fed. Rep. 86.

10 That a patent not offered as evidence before the examiner, and not set up in the answer, cannot be introduced in equity, even upon a question of title, as the plaintiff has no opportunity for explanation, see Grover & Baker Sewing Machine Co. v. Sloat (1860), 2 Fisher, 112.

That prior patents, though generally referred to in the answer cannot be first introduced after the hearing is closed, see Peterson v. Simpkins (1885), 25 Fed. Rep. 486.

That the defendant may offer the original at the hearing to show that the re-issue departs from it, though it was That evidence of prior use taken with- not put in before the master, if it works out proper notice and objected to cannot no surprise to the plaintiff, see Knapp be admitted under the answer when v. Shaw (1883), 15 Fed. Rep. 115; 23 afterward amended on motion, unless O. G. 2236. § 1128

11

designated by the court. When the evidence is thus complete and printed, and the briefs of counsel are prepared, the cause is argued and submitted to the decision of the court. After the hearing and submission neither party has the right to file any paper in the case without leave of the court, upon motion and due notice to the adversary.12

§ 1129. Practice and Procedure in Equity in Actions for Infringement.

The practice in equity, in actions for infringement, follows that of the English chancery as it existed before the "New Rules" were adopted, except where changed by express regulations. The rules in equity prescribed by the Supreme Court of the United States are binding on the Circuit Court.2 These rules were framed to conduct the cause to a hearing and have no effect upon it after it has been heard, unless steps are taken to bring it again within their operation. All privileges which they confer upon the parties, and all objections on the ground of their violation, must, therefore, be made available

11 That if the case is referred back to the master to take new proof, and it relates to the same subject, it does not make out a new case, see Wooster v. Simonson (1884), 20 Fed. Rep. 316; 28 O. G. 918.

12 In Union Sugar Refinery v. Matthiesson (1868), 3 Clifford, 146, Clifford, J. (148) "When a suit in equity has been heard and submitted to the court for decision, neither party has a right to file any paper in the cause except by leave of the court.

Such pro

hibition commences at the date of the
submission of the cause to the court,
and continues throughout the period
that it remains upon the docket there-
after. The master may report back the
cause to the court at any time when he
has completed his investigations; and
it would be the duty of the clerk to
allow him to file his report without any
new order from the court, as the right
to do so is implied from the decree re-.

ferring the cause to him for the purpose specified in the decree."

§ 1129. That equity practice, unless otherwise ordered by the Acts of Congress, or the Rules of the Supreme Court, is usually in accordance with the English chancery practice as it was before the "New Rules," see Goodyear v. Providence Rubber Co. (1864), 2 Fisher, 499; 2 Clifford, 351; Parker v. Sears (1850), 1 Fisher, 93; Motte v. Bennett (1849), 2 Fisher, 642.

2 That the Circuit courts are bound by and cannot rescind the rules of equity made by the Supreme Court, see Jenkins v. Greenwald (1857), 2 Fisher, 37; 1 Bond, 126.

That Federal courts of equity follow the practice prescribed by the judiciary acts and their own rules, not the local law, see United States v. American Bell Telephone Co. (1886), 29 Fed. Rep. 17; 38 O. G. 1237.