De Florez v. Raynolds. ford, by David R. Jacques, Esq., who was employed by Mr. Whitney, and the said motion was denied without any opinion having been rendered by the Court. Your petitioners further show, upon information and belief, that, upon the argument of the said cause before the Honorable Hoyt H. Wheeler, Mr. Whitney attempted, in the course of his argument, to refer to the said Dupas and DeLignac patents, as illustrations of the prior state of the art, but such reference was objected to by the counsel for the complainants, as irregular, on the ground that the same were not a part of the case, whereupon Mr. Whitney desisted from further reference thereto, and your petitioners, therefore, say, that the same were not considered by the Court, and no reference to them is made in the opinion. And your petitioners further show, upon information and belief, that, at the time they employed Mr. Whitney as counsel, and that he accepted their employment, Mr. Whitney was not a counsellor of this Court or admitted to practice. in any Court of this State, or qualified to appear therein, or to advise them as to their defence, or to take any steps on their behalf, and that he did not become a counsellor of this Court, or of the New York Supreme Court, until on or about the 26th day of May, 1876; and that George F. Martens, Esq., who appeared as their solicitor, and, as such, signed their answer, was not employed by your petitioners, nor were they acquainted with him, nor did they counsel with him; and, therefore, your petitioners say, that, at the time they were advised as to their defence in the said suit, and the steps proper or necessary to be taken for the protection and maintenance of their interests and rights, and at the time their answer in the said suit was prepared and filed, they did not have the benefit of the advice of a counsellor of this Court. Your petitioners further say, that the plaintiffs' attorney and counsel have asserted and still assert, that, in the accounting herein they expect to recover from your petitioners at least $50,000 as profits, and, if your petitioners should be compelled to pay such sum, they believe that they would be unable to recover back the same." The petition is accom De Florez v. Raynolds. panied by an affidavit made by the defendant Richardson, which says: "At the time the suit in the annexed petition mentioned was commenced, I was directed by my co-defendants to employ counsel and take especial charge of our defence therein, as I was more familiar than the other defendants with our can manufacture, and the subject matter of the litigation. I had been acquainted for about years with Mr. Whitney, our former counsel in said suit, and, upon the suit being commenced, was recommended by Mr. G. H. Churnock, the patentee of the can used by us, to employ Mr. Whitney, because he was acquainted with the subject of tin cans as affected by patents, and would be a very competent person to take charge of our interests. Mr. Whitney had also obtained the patent for the can used by us, and, as I was informed, others relating to the same subject, and had thereby acquired an extensive knowledge of the art. I supposed, at that time, Mr. Whitney to be a counsellor at law, my impression being derived from the signs upon his office door, on which he advertised as a solicitor of patents, his possession of a library, and I supposed that he was a lawyer who made a specialty of matters relating to patents, and had acquired an extensive experience therein. I directed Mr. Whitney to investigate the claims of the plaintiffs and advise us upon the subject, and authorized him to do whatever was requisite and proper for maintaining any defences which we might have. After Mr. Whitney had examined the subject of the litigation, he advised me that the plaintiffs' patent was void for an irregularity in the application, and also that the cans made by the defendants did not infringe. When, about the 1st of October, 1876, Mr. Whitney informed me of his being referred by the Patent Office to the Dupas patent, and that he had a copy of the latter, he did not explain to me the importance of these patents or their scope, nor did I understand that they were anticipations of the plaintiffs' invention, or that it was important that the answer should be amended so as to set them up; and I did not become acquainted with the contents of said Dupas patent, nor understandingly of the De Lignac patent, De Florez v. Raynolds. until the same were brought out by search made by Messrs. Wetmore and Jenner, our present counsel, subsequent to the decree. I intrusted these matters entirely to Mr. Whitney. I supposed that whatever was proper to be done would be regularly done by him. My attention was not called to the fact that George F. Martens, Esq., was attorney of record for us, as I have not had any acquaintance with him, and did not employ him nor counsel with him." The affidavit of Mr. Jenner, referred to above, says: "That, on the 7th day of September, 1878, he saw James A. Whitney, Esq., formerly attorney and counsel for the above named petitioners in the suit of Rafael de Florez et al. against them, for the purpose of ascertaining from Mr. Whitney why the Dupas and De Lignac patents, referred to in the annexed petition, were not mentioned in the answer in the said suit. Mr. Whitney informed me that he discovered the said patents on or about the 1st day of October, 1876, by accident, being referred to them by the Commissioner of Patents, in an application for a patent which he was then making to the Patent Office; that he, Mr. Whitney, did not make any search for French patents or other anticipations of the Pinner patent set forth in the complainants' bill in said suits or of the device used by the defendants, for the reason that he had no acquaintance with the French language, or so slight an acquaintance that he could read the said language only by the aid of a dictionary; that the said suit of De Florez against Raynolds was his first case, and he was not acquainted with the practice of examining at the Astor Library for foreign anticipations, and it did not occur to him to make any search or procure one to be made. Deponent further says, that he requested Mr. Whitney to make an affidavit of the facts so stated by him, having told him that he was preparing a petition for a review of the decree in said suit, and desired to use it in that connection, but Mr. Whitney refused to make any affidavit." There is also an affidavit of Mr. Richardson, stating that the petitioners did not employ Mr. Jacques as their counsel, and had no communication with him respecting their defence in the action; De Florez v. Raynolds. and that Mr. Jacques was employed by Mr. Whitney to argue said motion, because of Mr. Whitney's intention to leave the city, and did not at any time advise the petitioners regarding the suit. This application is made on the ground that the French patents to Dupas and De Lignac are an answer to the charge of infringement, and that the decision of the Court, on final hearing, would have been different, if the proofs had embraced those patents. In regard to the omission to introduce those patents into the proofs, it is contended, (1.) that the defendants were ignorant of the existence of those patents until after the proofs were closed; (2.) that they did not know of their relevancy and materiality until after the decree was made, and after they had employed their present counsel; (3.) that the ignorance of the defendants and the insufficiency of the application made in October, 1876, to admit said patents in evidence, were solely due to the inexperience and lack of legal knowledge of Mr. Whitney, so that the defendants were not advised as to the necessity of searching for those patents, nor as to their legal effect when found, and the rules of practice of the Court were not followed in the application made for their admission in evidence; (4.) that, in the selection of Mr. Whitney, the defendants were misled and mistaken, and were ignorant of the fact that he was not authorized and qualified to perform the duty which he undertook. This is not a case of newly discovered evidence. The gravamen of the application is the alleged laches and inexperience and incompetency of Mr. Whitney. If such grounds were to be admitted as reasons for opening cases, there would never be an end of a suit, so long as new counsel could be employed who could allege and show that prior counsel had not been sufficiently diligent, or experienced or learned. Questions of the kind have often been presented. In Ruggles v. Eddy, (11 Blatchf. C. C. R., 524,) application was made to amend an answer and contest the question of the infringement of a patent, which had been admitted, on the ground that, if the defendants' counsel had sufficiently studied the De Florez v. Raynolds. patent and examined the defendants' stoves, the admission of infringement would not have been made. The ground urged was, that the defendants' counsel had not been diligent enough. The Court (Judge Woodruff) said: "I am constrained to hold the defendants concluded. Their case, as made by themselves, rests either upon their own want of due diligence, or the want of due intelligence on the part of their counsel. By this the complainant ought not to be so far prejudiced as, after decree, reference and report of the master, to be compelled to go again through the litigation, on a point distinctly presented, and proper to be met at the outset. Their case, as presented by the counsel whom they have employed for the purposes of this motion, and who regards it as clear that, as to most of the stoves which they had made, they had avoided the operation of the patent, seems, at first view, one of hardship; but, if that is so, the defendants have brought it upon themselves, by their own negligence, or by relying on a degree of vigilance, study and accuracy on the part of their several counsel, which they now think was inadequate to their protection. No case has been referred to which, in any degree, tends to sanction the latitude of indulgence which the defendants here seek. Cases are numerous tending in the other direction, of which India R. Co. v. Phelps, (8 Blatchf. C. C. R., 85,) Hitchcock v. Tremaine, (9 Id., 550,) Prevost v. Gratz, (Peters C. C. R., 364,) and Livingston v. Hubbs, (3 Johns. Ch. R., 124,) are examples." The same principle is found in Webster Loom Co. v. Higgins, (13 Blatchf. C. C. R., 349,) in this Court. The case of Cutler v. Rice, (14 Pick., 494,) was one of a different kind, and the decision was put on the ground of surprise. The foregoing remarks are based on the assumption that the matter now sought to be introduced would, if it had been in the case, have led to a decision in favor of the defendants. It is well settled, that, in the case of an application, on the ground of newly discovered evidence, to vacate the decree in an equity suit on a patent, and allow the answer to be amended and the case to be retried, the application can be granted |