A bill in equity which assails two patents, issued nearly a year
apart, but to the same party and relating to the same subject, both
held by the same corporation defendant and used by it in the same
operations, is not multifarious.
Where a patent for a grant of any kind, issued by the United
States, has been obtained by fraud, by mistake, or by accident, or
where there is any error in the patent itself capable of
correction, a suit by the United States against the patentee is the
appropriate remedy for relief. This proposition is supported by
precedents in the High Court of Chancery of England, and in other
courts of that country.
The more usual remedy, under the English law, to repeal or
revoke a patent obtained by fraud from the King was a writ of
scire facias returnable either into the Court of King's
Bench or of Chancery, though it has been said that the jurisdiction
of the Court of Chancery arises not from its general jurisdiction
to give relief for fraud, but because the patents issuing from the
King were kept as records in the petty-bag office of that court.
The case, however, of
The Attorney General v. Vernon, 1
Vernon 277, and other cases seem to indicate that by virtue of its
general equity powers, the Court of Chancery had jurisdiction to
give relief against fraud in obtaining patents.
In England, grants and charters for special privileges were
supposed to issue from the King, as prerogatives of the Crown, and
the power to annul them was long exercised by the King by his own
order or decree. This mode of vacating charters and patents
gradually fell into disuse, and the same object was obtained by
scire facias returnable into the Court of King's Bench or
of Chancery.
In this country, where there is no Kingly prerogative, but where
patents for lands and inventions are issued by the authority of the
government and by officers appointed for that purpose, who may have
been imposed upon by fraud or deceit or may have erred as to their
power, or made mistakes in the instrument itself, the remedy for
such evils is by proceedings before the judicial department of the
government.
Both the Constitution and the acts of Congress organizing the
courts of the United States have in express terms provided that the
United States may bring suits in those courts, and they are all
very largely engaged in
Page 128 U. S. 316
the business of affording a remedy where the United States has a
legal right to relief.
The present suit -- a bill in Chancery in the Circuit Court of
the United States for the District of Massachusetts wherein the
United States are plaintiffs, brought against the defendant to set
aside patents for inventions on the ground that they were obtained
by fraud -- is a proper subject of the jurisdiction of that court
as defined in § 1, c. 37, Act of March 3, 1875, 18 Stat. 470, and
is well brought under the direction of the Solicitor General on
account of the disability of the Attorney General to take part in
the case, and its allegations of fraud and deception on the part of
the patentee in procuring the patents are sufficient, if sustained,
to authorize a decree setting aside and vacating the patents as
null and void.
Section 4920 of the Revised Statutes, which enumerates five
grounds of defense to a patent for an invention that may be set up
by anyone charged with an infringement of the rights of the
patentee, was not intended to supersede, nor does it operate as a
repeal or withdrawal of, the right of the government to institute
an action to vacate a patent for fraud.
In equity. The object of the bill, which was signed by the
District Attorney of the United States for the District of
Massachusetts and the Solicitor General, acting in this case as
Attorney General, was to obtain the cancellation, avoidance, recall
and repeal of the two patents granted to Alexander Graham Bell
which formed the subject of the litigation in
The Telephone
Cases, and which will be found in 126 U.S. at pages
126 U. S. 4 and 5,
one being numbered 174,46 and dated March 7, 1876; the other No.
186,787, dated January 30, 1877. It was charged that the patents
were and each of them was "procured to be issued by means of fraud,
false suggestion, concealment and wrong on the part of the said
Alexander Graham Bell," and that he and the Telephone Company,
which was his assignee, had at all times known and had full
knowledge of the alleged frauds and concealment.
It was alleged
"that up to the time of the issuing of the said [first] patent,
the said Bell had never in fact been able to transmit articulate
speech by the method or with the apparatus described in his said
application, but that he purposely framed his said application and
claim in ambiguous and general terms in order to cover both
antecedent and future inventions and to deceive and mislead the
examiners of the
Page 128 U. S. 317
Patent Office and the public, and did not set forth or declare
that his alleged invention had any relation to the art of
transmitting articulate speech by means of electricity, but
entitled it an application for 'an improvement in telegraphy,' and
made special reference to a then recent application made by himself
for a patent for a method of 'multiple telegraphy,' and treated his
alleged new invention as another method thereof, and set forth
advantages which it had over the other, but did not include or
mention its capacity, or claim for it any capacity, to transmit
speech."
"And your orator further shows and charges that by the means
aforesaid, the said Bell not only failed to meet the requirements
of the statute as to the form of his application, but did in fact
mislead and deceive the examining officers of the Patent Office,
and did cause them to regard the said alleged invention as a mere
improvement in telegraphy, and not as an invention of the
telephone, and did lead them to suppose that it had no relation to
the art of transmitting articulate speech by electricity, and did
thus cause them not to make an inquiry as to the state of that art,
or the patents or the printed publications concerning it; that
accordingly, no such inquiry was made by any of them, and that
thereby the said Bell did mislead and deceive your orator, and did
cause your orator to issue the said patent No. 174,465 in the form
and according to the tenor aforesaid, and that but for the said
delusive and ambiguous application the said patent, would not have
been granted or issued by your orator as aforesaid; wherefore your
orator avers that the said patent No. 174,465, issued upon said
delusive and ambiguous application, was and is void and of no
effect."
"Your orator further avers and charges upon information and
belief that at the time of filing the said application, the said
Bell was not the original and first inventor of all the
improvements in telegraphy described and claimed in the said
specification; that certain of the aforesaid so-called improvements
had been previously known to and used by others, as is hereinafter
more fully and at large set forth, that the said Bell, on the said
20th day of January, 1776, and at the time
Page 128 U. S. 318
of filing the said application, did not verily believe himself
to be the original and first inventor of all the so-called
improvements in telegraphy described and claimed in the said
specification, and that on the said 20th day of January, 1876, and
at the time of filing the said application, the said Bell did know
and did believe that certain of the so-called improvements in
telegraphy described and claimed in the specification aforesaid had
been previously known to and used by others, as is hereinafter more
fully set forth."
"And your orator avers and charges that the said untrue
statements made by said Bell as aforesaid constituted deception and
fraud upon your orator by the said Bell, and did deceive and
defraud your orator, and did cause your orator to issue and deliver
said patent No. 174,465 to said Bell upon your orator's faith that
the said statements were true, and that but for the said false and
fraudulent statements of the said Bell made by him as aforesaid,
the said patent would not have been issued or granted by your
orator so as to create any exclusive monopoly of the method or
process described in the said fifth claim thereof."
It was then charged that Philipp Reis' device of "an apparatus
for the transmission of speech by means of the galvanic current"
(
see 126 U.S.
126 U. S. 33-74)
was well known to Bell and the world before 1874, and that
"many persons devised and were seeking to devise apparatus and
means by which such method and process could be successfully
operated, and made to transmit articulate speech,"
and it was said that
"not only did the said Philipp Reis make and operate an
apparatus upon such alleged method or process, but divers other
persons in this county did, prior to the alleged date of said
Bell's invention, to-wit, prior to the year 1875, well
understanding the conditions under which alone speech and other
composite sounds could be transmitted by electricity, experiment
upon said problem and devise, use, and operate more or less perfect
means therefor."
Then, after charging that the caveat of Elisha Gray, also set
forth in
The Telephone Cases, 126 U.S.
126 U. S. 77-86,
was filed in the Patent Office on the same day with Bell's
application for his first patent, and prior thereto, the bill
charged:
Page 128 U. S. 319
"That notwithstanding the requirements of the said statute to
preserve said caveat in secrecy, the examining officer of the
Patent Office communicated to the said Bell very soon after the
filing of the said caveat the fact and date of the filing thereof,
the name of the caveator, as well as the general nature of the
claim contained therein and some information as to the particular
method employed; that the said Bell, by his attorneys, followed up
this knowledge, unlawfully obtained, and induced some of the
officers of the Patent Office to violate still further the
requirement of secrecy concerning said caveat by setting on foot an
inquiry for the benefit of the said Bell as to the precise time of
the day when the same was filed, and thereupon, without any proof
and contrary to law and the custom of the office, it was determined
by the Patent Office authorities, contrary to the fact, that said
caveat was filed after said application, although on the same day,
and that the said caveator was not entitled to the notice which had
already been given, or to any of the benefits of the said section,
with respect to the application of the said Bell."
"That thereupon the examiner of the Patent Office who had the
matter in special charge, without communicating to the said Gray
the question that had been so raised as to the time of the filing
of the respective papers nor the determination thereof or giving
him any opportunity to establish by proof the actual time of filing
his own, announced to him by letter dated February 25, 1876, that
the said notice had been given under a misapprehension of the
rights of the parties, and was withdrawn, and on the same day
informed the said Bell by letter that the suspension of his
application, had been withdrawn."
"That after the withdrawal and revocation of the suspension of
the said application of Bell, the said Bell called upon the said
examining officer at the room occupied by him in the Patent Office,
and that the said examining officer did then, on or about the 26th
or 27th day of February, 1876, exhibit to the said Bell the
drawings of the said caveat of Gray and did then and there fully
describe to the said Bell the construction and mode of operation of
the telephone illustrated in the said
Page 128 U. S. 320
drawing and the method disclosed by the said Gray in said caveat
of transmitting and receiving vocal sounds."
"That the said Bell did unlawfully obtain important information
as to essential features of the invention of Gray as disclosed by
his caveat, and did proceed without delay to make substantial
amendments of his said specification and claims, which amendments
were made on the 29th day of February, only four days after said
withdrawal of notice was communicated to said Gray; that such
amendments related to those parts of said Bell's alleged invention
which he and his assigns have since claimed as the cardinal element
or feature of his patent, to-wit, the transmission of sounds by
gradual or undulatory changes in the electrical current, as
distinguished from alternate or pulsatory changes; that in the said
notice of the 19th of February, 1876, the said examiner had
distinctly advised the said Gray that the application of Bell
seemed to conflict with his caveat in respect to the method of
producing the undulations by varying the resistance of the circuit
and the method of transmitting vocal sounds telegraphically by
causing these undulatory currents; that this same examiner, without
the knowledge of the said Gray, communicated to Bell the fact that
Gray's invention varied the resistance and produced undulations by
means of a liquid transmitter; that upon and in consequence of this
surreptitious information and of the unlawful communications
respecting the said caveat made to the said Bell, as herein above
alleged, the said Bell made the said amendments, more clearly
defining the distinction between pulsatory and undulatory currents
and substituting the word 'gradually' for 'alternately' wherever it
occurred in one of his claims, and your orator charges that these
amendments were substantial, as well in themselves as in their
bearing upon the rights then secured by Gray under the statute, and
were not verified by oath, and that the said patent was issued
thereon, and during the pendency of said caveat, and with undue and
unusual haste, and without proper consideration and in violation of
the rights secured by said Gray, or of the rights and interests of
the citizens of the United States with respect to the art of
telephony now sought
Page 128 U. S. 321
to be monopolized by the defendant the American Bell Telephone
Company."
"That the examiner was of the opinion that the said application
and caveat were in interference on principles employed on harmonic
or multiple telegraphy, but not in the art of transmitting speech,
and did not understand the application to lay claim to the art of
transmitting speech; nor did the language of the specification, or
the drawing attached thereto, give due, fair and intelligible
notice that, notwithstanding the entitling of the invention as an
improvement in the art of telegraphy, one portion thereof might be
construed to have reference to telephony, which had been, since
that art had been invented by Reis, the term adopted by
lexicographers, and had come into general use as a recognized term
of art denoting a peculiar operation for transmitting speech by
means of electricity."
"Your orator is informed and believes that the said Bell was not
able to get the said devices shown in his patent, or any of them,
to transmit and deliver articulate speech up to the time of issuing
the said patent on the 14th of February, 1876, and he did not
intend to so operate them or any of them, nor was he aware that
they or any of them would do so."
"Your orator further shows that on March 10, 1876, three days
after the said patent issued to said Bell, he obtained for the
first time articulate speech by an electric speaking telephone.
This success was not obtained by any device or apparatus described
in the said Bell's specification and patent, but on March 10, 1876,
was obtained with the liquid transmitter, or water telephone,
described in Gray's caveat, and a knowledge of which said Bell
derived from the wrongful communication to him, as before shown, of
the contents of the Gray caveat."
"These facts showing fraud, collusion and overreaching in the
obtaining of the said Bell patent long remained artfully concealed
from your orator, and have only recently been brought to your
orator's knowledge and attention."
Then, after allegations which are not necessary to be set
Page 128 U. S. 322
forth at length in order to understand the opinion of the Court,
including some allegations relating to the discoveries of Antonio
Meucci, Thomas A. Edison, Asahel K. Eaton and to the Varley
inventions, described in 126 U.S.
126 U. S.
107-109; the bill charged respecting the Dolbear
invention (
see 126 U.S.
126 U. S.
131-142) that
"in addition to the above stated grounds for the invalidity of
said patent No. 186,787, the said Bell procured his last-named
patent by fraud upon one Amos E. Dolbear, professor of physics at
Tufts College in Massachusetts, in the manner, and under the
circumstances following, to-wit:"
"The said Dolbear did discover and invent the magnetotelephone,
now used as a receiver by the American Bell Telephone Company,
being the same as that embraced in the said patent issued to said
Bell on said January 30, 1877, and made and exhibited a complete,
perfect, articulate speaking telephone on September 20, 1876,
combining all the appliances now used in the modern
magneto-telephone used by the defendant, the American Bell
Telephone Company, professedly under the said last-named patent,
and began to take steps to secure to himself, his heirs and
assigns, a patent for the said invention from the government of the
United States, and to that end communicated his invention to a,
friend, one Percival V. Richards, who was assisting him to procure
a patent for his said invention."
"That said Richards, who was also a friend and associate of said
A. G. Bell, while proceeding to secure a patent for said Dolbear
for said invention, inadvisedly communicated the fact of said
invention of the said Dolbear to the said Bell, and also
communicated to him a description of said invention of Dolbear,
whereupon and soon after he was informed by one Gardner G. Hubbard,
who was a near connection of and associate with the said Bell, that
said Bell had invented and secured a patent on said devices and
inventions of said Dolbear over two years previously, which untrue
statement was communicated at the instance of said Bell to said
Dolbear, who believed the same, and thereafter ceased for a long
time all further efforts to secure a patent for his said
invention."
"That said Bell and Hubbard, as soon as they had gathered
Page 128 U. S. 323
and secured the details of said Dolbear's invention, proceeded
forthwith to the City of Washington, and then and there applied for
and secured said patent No. 186,787 for the invention of said
Dolbear."
"Your orator further says that at the time said Bell made oath
to his application for said invention, he well knew that his oath
was not true, and that not only he was not the inventor thereof,
but that he had appropriated the invention of the said
Dolbear."
"Your orator further says that said Amos E. Dolbear, soon after
making said invention embraced in said patent No. 186,787, entered
into a contract and bargain with the Gold and Stock Telegraph
Company, a corporation existing under the laws of the State of New
York, controlled by the Western Union Telegraph Company, to
manufacture, use and sell his said invention, which said
corporation had exclusive control of said invention, and made, used
and sold said telephones of Dolbear for the space of nearly three
years, when the said American Bell Telephone Company and the said
Western Union Telegraph Company, in litigation then pending between
them in what is known as the
Dowd case, agreed to
compromise their differences and appropriate to themselves the
entire profits arising from telephony in the United States, and
suppressed the fact as to the said invention of said Dolbear of
said devices, and that said Bell had appropriated and patented the
same."
"Your orator further says that said American Bell Telephone
Company and said Western Union Telegraph Company, in order further
to suppress the facts and deceive the public, caused a collusive
interference case to be begun and prosecuted in the United States
Patent Office between said Bell and said Dolbear, wherein said
Dolbear was not represented except in name, and wherein his
assigns, the said Western Union Telegraph Company, the American
Bell Telephone Company, and said Bell were the real parties and
were all in one interest, which said interference case was
prosecuted so as to suppress the fact that, as against Bell, said
Dolbear was the inventor, the attorney for said Dolbear's assignee
being in fact one of the
Page 128 U. S. 324
counsel for and in the pay of said American Bell Telephone
Company, the testimony also being taken by apparently opposing
counsel for opposing interests, but in fact for the same parties
and for the same interests, and that accordingly, in the said case,
it was decided that the defendant Bell was the discoverer and
inventor of said device."
"And your orator charges that for the fraud aforesaid, the said
last-named patent, No. 186,787, is invalid and ought to be
cancelled and made void by the decree of this honorable court."
The bill further contained the following allegation:
"And your orator further says that prior to the grant of said
letters patent No. 186,787, and prior to the 13th day of January,
1877, the day upon which the said Bell made oath to the application
upon which the said patent was granted, and prior to the 15th day
of January, 1877, the day on which the said application was filed
in the Patent Office, the said Bell, as your orator is informed and
believes, caused an application to be made for letters patent of
Great Britain for the same invention as that described and claimed
in the said letters patent No. 186,787; that letters patent of
Great Britain, numbered 4765 and dated December 9, 1876, were
issued to William Morgan Brown, patent agent, 'for the invention of
improvements in electric telephony and telephonic apparatus, a
communication from abroad by Alexander Graham Bell,' and that the
invention described and claimed in said letters patent of Great
Britain No. 4765 was the same as that described and claimed in said
United States patent No. 186,787; yet the said Bell, as your orator
is informed and believes, concealed from the Commissioner of
Patents the facts above mentioned about the said letters patent of
Great Britain, and in consequence of this suppression of the truth,
a patent was wrongfully issued to him for a term of seventeen years
instead of being so limited as to expire at the same time with the
said letters patent of Great Britain."
To this bill the Bell Telephone Company filed a demurrer as
follows:
"This defendant, the American Bell Telephone Company,
Page 128 U. S. 325
by protestation, not confessing all or any of the matters and
things in the plaintiff's bill of complaint contained to be true in
such manner and form as the same are therein set forth and alleged,
doth demur to said bill, and for causes of demurrer shows
that:"
"I. (1) The said bill is multifarious in that it joins
allegations and prayers for relief in respect of patent No.
174,465, dated March 7, 1876, and allegations and prayers for
relief in respect of patent No. 186,787, dated January 30,
1877."
"(2) The bill does not point out and specify which of the
persons, patents and publications referred to in its several
schedules anticipate each of the inventions claimed in the said two
patents respectively, nor in the several claims of each, it
appearing by said schedule that some of the patents and
publications therein referred to are subsequent in date to both the
said patents granted to Bell."
"II. To so much of said bill as refers and relates to patent No.
174,465, dated March 7, 1876, this defendant demurs for the
following causes of demurrer:"
"(1) The plaintiff in and by its said bill does not show any
power or authority, and no power or authority in law exists, in any
person or party or any court to bring said suit, nor to entertain
the same, nor to give the relief therein prayed, nor any relief
thereunder or touching the subject matter thereof."
"(2) The plaintiff in and by said bill has not made or stated a
case which calls upon or justifies this court in the exercise of
its discretion to permit this bill to be entertained."
"(3) The plaintiff in and by its said bill has not made or
stated a case which entitles it in a court of equity to the relief
therein prayed for, or any relief whatever."
"(4) The plaintiff in and by its said bill has not made or
stated a case which entitles it in a court of equity as against
this defendant, the American Bell Telephone Company, to the relief
therein prayed for, or any relief whatever."
"(5) The case stated in and by said bill is one which, as
against this defendant, the assignee of said Bell patents, should
have been prosecuted (if at all) with the utmost diligence,
whereas, as against this defendant, it is a stale claim,
contrary
Page 128 U. S. 326
to equity and good conscience, and one which, by reason of the
gross laches and delay in prosecuting it, a court of equity ought
not to entertain."
"III. To so much of said bill as refers and relates to patent
No. 186,787, dated January 30, 1877, this defendant demurs for the
following causes of demurrer:"
"(1) The plaintiff in and by its said bill does not show any
power or authority, and no power or authority in law exists in any
person or party or any court, to bring said suit, nor to entertain
the same, nor to give the relief therein prayed, nor any relief
thereunder or touching the subject matter thereof."
"(2) The plaintiff in and by said bill has not made or stated a
case which calls upon or justifies this Court, in the exercise of
its discretion, to permit this bill to be entertained."
"(3) The plaintiff in and by its said bill has not made or
stated a case which entitles it in a court of equity to the relief
therein prayed for, or any relief whatever."
"(4) The plaintiff, in and by its said bill, has not made or
stated a case which entitles it in a court of equity, as against
this defendant, the American Bell Telephone Company, to the relief
therein prayed for, or any relief whatever."
"(5) The case stated in and by said bill is one which, as
against this defendant, the assignee of said Bell
patents,
should have been prosecuted (if at all) with the utmost diligence,
whereas, as against this defendant, it is a stale claim, contrary
to equity and good conscience, and one which by reason of the gross
laches and delay in prosecuting it, a court of equity ought not to
entertain."
"IV. This defendant demurs to the whole of said bill for each of
the reasons set forth in Division III."
"V. (1) As to each and every charge in said bill set forth as
the basis of an attack on the validity of said patents, or either
of them, or any claim of either of them, this defendant demurs
thereto separately for the reason that it does not show the said
patent to be void, and also because the allegations therein
contained, if true, would not entitle the plaintiff to the relief
prayed for, nor to any relief in a court of equity."
"And it prays that this clause of demurrer may be taken
Page 128 U. S. 327
as a separate demurrer on each of said grounds to each such
allegation as if repeated in a separate form to each."
"The allegations here referred to are the following: [setting
forth the divisions in the bill demurred to]."
"VI. This defendant specially demurs to said bill for that it
does not set forth any fraud in the procuring of said patents, and
for that it does not specifically set forth what acts, if any, the
complainant relies on as constituting fraud in procuring said
patents, and for that it does not show when, how, from whom, or by
what means the complainant first had knowledge or notice of each
alleged fact, nor why, with due diligence, it would not have
learned them earlier."
"VII. Wherefore, and for divers other good causes of demurrer
appearing in said bill, the defendant doth demur to said bill and
to separate parts thereof where the demurrers are hereinbefore
expressed to be to parts, and humbly demands the judgment of this
court whether he shall be compelled to make any further or other
answer to the said bill or said separate parts where the demurrers
are expressed to be to separate parts, and prays to be hence
dismissed with his costs and charges in this behalf most wrongfully
sustained."
The court below, after hearing argument, sustained the
demurrers, and dismissed the bill. 32 F. 591.
Page 128 U. S. 349
MR. JUSTICE MILLER delivered the opinion of the Court.
This is an appeal from the Circuit Court of the United States
for the District of Massachusetts.
Page 128 U. S. 350
The United States brought its suit in equity in that court
against the American Bell Telephone Company, a corporation
organized under the laws of the State of Massachusetts, and against
Alexander Graham Bell, a resident of the District of Columbia. The
action purports to have been instituted by George M. Stearns, the
United States District Attorney for that district, by the direction
of George A. Jenks, the Solicitor General of the United States,
acting as its Attorney General in this matter, because the latter
officer was under a disability to prosecute this suit.
The object of the bill was to impeach two patents for inventions
issued to said Bell, the first dated March 7, 1876, and numbered
174,465, and the second dated January 30, 1877, and numbered
186,787, with a prayer that they be declared void and of no effect
and that they be in all things recalled, repealed, and decreed
absolutely null; that they be erased and obliterated from the
records of the Patent Office, and for other relief.
To this bill the telephone company entered an appearance and
filed a demurrer. It is not shown that Bell either appeared or
filed any pleading. At the hearing on the demurrer, it was
sustained by the circuit court, the bill dismissed, and the United
States has brought the present appeal to reverse that ruling.
The defendant demurs generally to the whole bill, and in that
demurrer objects to specific portions of the bill, and it may be
very doubtful whether these are not so mixed up in the same
pleading as to make the demurrer void so far as it relates to such
parts of it. As the main questions on the demurrer, however, relate
to matters which go to the merits of the whole bill, they are
probably all that is necessary to consider here. Some of these
points of demurrer, although stated as such in a general demurrer,
are manifestly only such as could be taken under a special
demurrer, and would not, if successful, defeat the entire bill.
The grounds of demurrer which we shall consider in this opinion
are as follows:
First.
"That the said bill is multifarious in that it joins
Page 128 U. S. 351
allegations and prayers for relief in respect of patent No.
174,465, dated March 7, 1876, and allegations and prayers for
relief in respect of patent No. 186,787, dated January 30,
1877."
Second. The defendant demurs as to each patent specifically
"that the complainant, in and by its said bill, does not show
any power or authority, and no power or authority in law exists, in
any person or party, or any court, to bring said suit, nor to
entertain the same, nor to give the relief therein prayed, nor any
relief thereunder or touching the subject matter thereof,"
and further
"that the complainant, in and by said bill, has not made or
stated a case which calls upon or justifies this court, in the
exercise of its discretion, to permit this bill to be
entertained."
Third. The defendant specially demurs to the bill
"for that it does not set forth any fraud in the procuring of
said patents, and for that it does not specifically set forth what
acts, if any, the complainant relies on as constituting fraud in
procuring said patents, and for that it does not show when, how,
from whom, or by what means the complainant first had knowledge or
notice of each alleged fact, nor why, with due diligence, it would
not have learned them earlier,"
and also
"because the allegations contained in said bill, if true, would
not entitle the complainant to the relief prayed for, nor to any
relief in a court of equity."
While these grounds of demurrer are stated in the language of
the demurrer itself, we have grouped them somewhat differently from
the mode in which they are there stated, because we think the
consideration of the three causes of demurrer here laid down must
dispose of the case before us.
With regard to the question of multifariousness, we do not think
it needs much consideration. It is very true that the bill assails
two patents, issued nearly a year apart, but they were issued to
the same party, Alexander Graham Bell, and relate to the same
subject, that of communicating messages at a distance by speech,
and by the same general mode, the later patent being supposed to be
for an improvement upon the invention of the earlier one. Both are
held by the same defendant,
Page 128 U. S. 352
the American Bell Telephone Company, and are used by it in the
same operations.
The principle of multifariousness is one very largely of
convenience, and is more often applied where two parties are
attempted to be brought together by a bill in chancery who have no
common interest in the litigation, whereby one party is compelled
to join in the expense and trouble of a suit in which he and his
codefendant have no common interest, or in which one party is
joined as complainant with another party with whom in like manner
he either has no interest at all, or no such interest as requires
the defendant to litigate it in the same action.
Oliver v.
Piatt, 3 How. 333;
Walker v. Powers,
104 U. S. 245.
In the present case, there is no such difficulty. The Bell
Telephone Company and Mr. Bell himself are the only parties
defendant, and their interest in sustaining the patents is the
same. So, also, there is no such diversity of the subject matter
embraced in the assault on the two patents that they cannot be
conveniently considered together, and although it may be possible
that one patent may be sustained and the other may not, yet it is
competent for the court to make a decree in conformity with such
finding. It seems to us in every way appropriate that the question
of the validity of the two patents should be considered
together.
It will be convenient, as a means of showing specifically the
ground of complaint in the bill, to take up next the third group of
the causes of demurrer. The point intended to be presented there is
that the bill does not set forth any fraud in the procuring of the
patents, and does not specifically set forth what acts, if any, the
complainant relies upon as constituting fraud in their procurement,
and also that the allegations contained in the bill, if true, would
not entitle the complainant to the relief prayed for, nor to any
relief in a court of equity. Assuming for the present that the
circuit courts of the United States have the same jurisdiction in
equity, in a case where the United States itself is plaintiff, that
they have where a citizen is plaintiff to relieve against accident,
mistake, fraud, covin, and deceit, we proceed to examine into the
sufficiency of the allegations in this bill to maintain such a
suit.
Page 128 U. S. 353
The fifth claim of invention of the patent of March 7, 1876,
which was held to be a sufficient claim for an invention in the
recent
Telephone Cases, decided March 19, 1888, and
reported in
126 U. S. 1, is as
follows:
"5. The method of and apparatus for transmitting vocal or other
sounds telegraphically, as herein described, by causing electrical
undulations, similar in form to the vibrations of the air
accompanying the said vocal or other sounds, substantially as set
forth."
The claims of invention under the patent of January 30, 1877,
are eight in number, and may be stated generally to be for
improvements in the instruments by which the vocal sounds mentioned
in the foregoing paragraph are conveyed and received. The bill
alleges that Bell, the patentee, knew at the time of filing his
application for the patent of March 7, 1876, that he was not the
original and first inventor, as the law required he should be, of
all the improvements in telegraphy described and claimed in said
specification;
"that certain of the so-called improvements had been previously
known to and used by others, as is hereinafter more fully and at
large set forth; that the said Bell, on the 20th day of January,
1876, and at the time of filing the said application, did not
verily believe himself to be the original and first inventor of all
the so-called improvements in telegraphy described and claimed in
the said specification, and that on the said 20th day of January,
1876, and at the time of filing the said application, the said Bell
did know and did believe that certain of the so-called improvements
in telegraphy described and claimed in the specification aforesaid
had been previously known to and used by others, as is hereinafter
more fully set forth."
It is then charged that the said untrue statements made by said
Bell constituted deception and fraud upon the government, and did
deceive and defraud complainant, and did cause complainant to issue
and deliver said patent No. 174,465 to said Bell, and that but for
said fraudulent statements of said Bell, said patents would not
have been issued.
The bill alleges also that in his application for the patent,
Bell misled the Patent Office by a statement that his invention
Page 128 U. S. 354
was for "an improvement in telegraphy," and especially for a
patent for a method of "multiple telegraphy," and that he carefully
and intentionally refrained from any expression which would lead to
the idea that his invention was to be used as a telephone or was
capable of such use.
The bill then proceeds to describe various discoveries in the
art to conveying articulate sounds by telegraphic wires prior to
that of Bell, with which it is alleged Bell himself was well
acquainted and which anticipated his discovery and render his
patent void. Among them are those of Philip Reis, of Germany,
Elisha Gray of Chicago, and certain fraudulent practices with
regard to Gray's claim are charged upon Bell. It is also claimed
that Bell was anticipated in the discovery of an electrical
speaking telephone by Philip Reis, Cromwell Fleetwood Varley,
Antonio Meucci, Elisha Gray Thomas A. Edison, Asahel K. Eaton, and
many others. The bill further charges
"that said Bell, well knowing that he was not the inventor of
the art of transmitting speech by an electric speaking telephone
and also that the patent of March 7, 1876, neither in the drawings,
specifications, nor claims of said patent described any apparatus
or device by which articulate speech could be transmitted through
the instrumentality of electricity as perfectly or as well as
articulate speech had been transmitted prior to the alleged said
invention, through the instrumentality of electricity, by the use
of well known preexisting methods and apparatus, sought to fortify
himself in his wrongful claim and more completely to secure to
himself the monopoly since alleged by him to be described in said
patent, and to further impose upon your orator and the Patent
Office, and to that end, on or about January 15, 1877, made another
application for a patent to be issued to him, upon which
application a patent was issued, No. 186,787, dated January 30,
1877, which said patent purports to be granted to him for a new and
useful improvement in electric telegraphy."
It is then charged
"that at the time said Bell applied for said last-mentioned
patent, he well knew that every material part, portion, and device
and apparatus set forth and described
Page 128 U. S. 355
in his said patent and specification were not his invention, but
that the several elements, considered either separately or
combined, had been taken bodily by him from well known and existing
apparatus, devices, and plans invented and contrived by others for
the purpose of transmitting articulate speech by means of
electricity."
The charge is also made
"that he so framed the several claims in said patent, No.
186,787 as on the face thereof to give him and his associates the
practical monopoly of well known and essential devices used and
combined in all instruments for the transmission of articulate
speech by electricity."
It is also asserted that "said Bell procured his last-named
patent by fraud upon one Amos E. Dolbear, professor of physics at
Tufts College, in Massachusetts," in a manner and under
circumstances which are minutely described in the bill.
It seems to us that if Bell was aware at the time that he filed
his specifications, asserted his claims, and procured his patents
that the same matter had been previously discovered and put into
operation by other persons, he was guilty of such a fraud upon the
public that the monopoly which these patents grant to him ought to
be revoked and annulled. We will consider hereafter the power and
duty of the court in such a case. At present, we are concerned with
the sufficiency of the allegations -- that is to say, whether the
allegation of this fraud is made with such minuteness and
sufficiency of detail as to require an answer on the part of the
defendants.
The fraud alleged is precisely the fraud which would be
committed in a case of that kind. It is a fraud of obtaining a
patent for an invention of which the party knew he was not the
original inventor. This priority of invention is an essential
element. It is absolutely necessary to the right to have such a
patent, and can in no case be dispensed with. It may be possible
that a patent would not be absolutely void where the patentee was
not really the first inventor, and the act of Congress made
provision that any man sued for an infringement of such patent
might prove that the patentee was not the original discoverer or
inventor. But we do not decide here whether a patent is absolutely
void because the patentee
Page 128 U. S. 356
is not the first inventor, nor whether a court of equity should
set aside a patent where the party had obtained it without fraud or
deceit, believing himself to be the first inventor. It is
sufficient for the present case, in which, on demurrer, we wish to
decide nothing more than is necessary to determine whether the
defendants should be called to answer the bill, to say that the
charge here is that he knew he was not the first inventor, and that
his efforts to procure the patent were fraudulent because he was
aware that he was obtaining a patent to which he was not in law or
equity entitled.
Nor is the objection to the bill that it does not allege the
facts which constitute the fraud well taken. The guilty knowledge
is well and fully stated, the prior inventions and discoveries and
their authors are alleged to have been known to Bell, and are
mentioned with sufficient precision, and his connection with some
of them, especially in the case of Dr. Gray and others, is set
forth with minute particularity. It is mistake to suppose that in
stating the facts which constitute a fraud, where relief is sought
in a bill in equity, all the evidence which may be adduced to prove
that fraud must be recited in the bill. It is sufficient if the
main facts or incidents which constitute the fraud against which
relief is desired shall be fairly stated, so as to put the
defendant upon his guard and apprise him of what answer may be
required of him. Story Equity Pleadings § 252.
In all these particulars, we think the bill is sufficiently
explicit. There can be no question that if the bill, as is the
general rule on demurrers, is to be taken as true, there is enough
in it to establish the fraud in the procurement of the patent and
to justify its cancellation or rescission, if the court has
jurisdiction to do so.
Harding v.
Handy, 11 Wheat. 103;
St. Louis v. Knapp
Co., 104 U. S. 658.
But the second group of causes of demurrer is perhaps the most
important, and the one on which counsel seem to have principally
relied, the essence of which is that
"no power or authority in law exists in any person or party or
any court to bring said suit, nor to entertain the same, nor to
give the relief therein prayed, nor any relief thereunder touching
the
Page 128 U. S. 357
subject matter thereof,"
and
"that the complainant has not made or stated a case which calls
upon or justifies this Court in the exercise of its discretion to
permit this bill to be entertained."
It will be observed that this broad assertion admits that a
party may practice an intentional fraud upon the officers of the
government who are authorized and whose duty it is to decide upon
his right to a patent, and that he may by means of that fraud
perpetrate a grevious wrong upon the general public, upon the
United States, and upon its representatives. It admits that by
prostituting the forms of law to his service, he may obtain an
instrument bearing the authority of the government of the United
States, entitling him to a monopoly in the use of an invention
which he never originated, of a discovery which was made by others,
and which, however generally useful or even necessary it may
become, is under his absolute and exclusive control, either as to
that use or as to the price he may charge for it, during the life
of the grant. It assumes that the government, which has thus been
imposed upon and deceived, is utterly helpless, and that it can
take no steps to correct the evil or to redress the fraud. If such
a fraud were practiced upon an individual, he would have a remedy
in any court having jurisdiction to correct frauds and mistakes,
and to relieve against accident; but it is said that the government
of the United States -- the representative of 60,000,000 of people,
acting for them, on their behalf and under their authority -- can
have no remedy against a fraud which affects them all, and whose
influence may be unlimited.
Though by the Constitution of the United States it is declared
that
"The judicial power shall extend to all cases, in law and
equity, arising under this Constitution, the laws of the United
States, and treaties made, or which shall be made, under their
authority,"
and "to controversies to which the United States shall be a
party," the argument asserts that the practice of a gross fraud
upon the United States, concerning matters of immense pecuniary
value and affecting a very large part of its population, is not a
proper question of judicial cognizance. It would be a strange
anomaly in a government
Page 128 U. S. 358
organized upon a system which rigidly separates the powers to be
exercised by its executive, its legislative, and its judicial
branches, and which in this emphatic language defines the
jurisdiction of the judicial department, to hold that in that
department there should be no remedy for such a wrong.
As we shall presently see, this Court has repeatedly held, after
very full argument and after a due consideration of the proposition
here stated, that in regard to patents issued by the government for
lands conveyed to individuals or to corporations, the circuit
courts of the United States do have jurisdiction to set aside and
cancel them for frauds committed by the parties to whom they were
issued. This class of cases will be considered further on. It is
sufficient to say here that they establish the right of the United
States to bring suits in its own courts to be relieved against
fraud committed in cases of that class exactly similar to that
charged in the present case, and it is also to be observed that in
those cases there is no express act of Congress authorizing such
procedure, a ground of objection which is here urged.
Recurring to the Constitution itself -- the great source of all
power in the United States, whether executive, legislative, or
judicial -- there is a striking similarity in the language of that
instrument conferring the power upon the government under which
patents are issued for inventions and patents are issued for lands.
It is declared in Article I, Section 8, par. 8, that
"The Congress shall have power . . . to promote the progress of
science and useful arts, by securing for limited times to authors
and inventors the exclusive right to their respective writings and
discoveries."
It is by virtue of this clause that Congress has passed the laws
under which the patents of the defendant in this case were
issued.
Article IV, § 3, par. 2, declares that
"The Congress shall have power to dispose of and make all
needful rules and regulations respecting the territory or other
property belonging to the United States."
It is under this clause that Congress has passed laws by which
title to public lands is conveyed to individuals, by instruments
also called patents.
The power, therefore, to issue a patent for an invention,
and
Page 128 U. S. 359
the authority to issue such an instrument for a grant of land,
emanate from the same source, and although exercised by different
bureaus or officers under the government, are of the same nature,
character, and validity, and imply in each case the exercise of the
power of the government according to modes regulated by acts of
Congress.
With regard to the jurisdiction of the circuit court, in which
this suit was brought, there does not seem to be any objection made
by defendants if such suit could be brought in any court. Indeed,
the language of the act of Congress on that subject does not admit
of any such doubt, for it declares
"That the circuit courts of the United States shall have
original cognizance, concurrent with the courts of the several
states, of all suits of a civil nature at common law or in equity,
where the matter in dispute exceeds, exclusive of costs, the sum or
value of five hundred dollars, and arising under the Constitution
or laws of the United States, or treaties made, or which shall be
made, under their authority, or in which the United States are
plaintiffs or petitioners."
Act of March 3, 1875, 18 Stat. 470.
In the present case, the United States are plaintiffs, and the
bill asserts that the suit is one of a civil nature, and of
equitable cognizance, and manifestly, if it presents a good cause
of action, it arises under the laws and Constitution of the United
States. It is therefore within the language both of the
Constitution and of the statute conferring jurisdiction on the
circuit courts. An examination of the specific objections made to
the present bill will illustrate and enforce this general view.
While it cannot successfully be denied that the general powers of a
court of equity include the right to annul and set aside contracts
or instruments obtained by fraud, to correct mistakes made in them,
and to give all other appropriate relief against documents of that
character, such as requiring their delivery up, their cancellation,
or their correction, in order to make them conform to the intention
of the parties, it would seem to require some special reason why
the government of the United States should not be able to avail
itself of these powers of a court of equity. Accordingly, the
defendant objects that the
Page 128 U. S. 360
appropriate remedy, if any exists, is in the common law courts,
and not in a court of equity, and that in the ancient proceedings
of our English ancestors in regard to patents, the only remedy for
relief against them when they were improvidently issued was by a
scire facias in the name of the King, or by his express
and personal revocation of them.
Charters and patents authenticating grants of personal
privileges were in the earlier days of the English government made
by the Crown. They were supposed to emanate directly from the King,
and were not issued under any authority given by acts of
Parliament, nor were they regulated by any statutes. Being,
therefore, in their origin an exercise of his personal prerogative,
the power of revoking them, so far as they could be revoked at all,
was in the King, and was exercised by him as a personal privilege.
This mode of revoking patents, however, seems to have fallen into
disuse, and the same end was attained by the issue of writs of
scire facias in the name of the King to show cause why the
patents should not be repealed or revoked. These were, of course,
returnable into some court, and it appears to have been the
practice to do this in the Court of King's Bench, or in the Court
of Chancery, where the record of the patent always remained in what
was called the "Petty Bag Office." If the latter mode is to be
considered a proceeding in chancery which, under our adoption of
the methods and jurisdiction of the High Court of Chancery in
England, would fall within the province of a chancery court in this
country, then the precedent for the exercise of this jurisdiction
by a court of chancery is clear and undoubted. This, however, is a
question which, if not in relation to this particular class of
cases, has, in regard to others, concerning the prerogative
jurisdiction of the court of chancery in this country, been
doubted. But the courts of England seem to have considered that in
the matter of repealing or revoking a patent, the King may sue in
what court he pleases.
See Magdalen College Case, 11 Rep.
66
b, 68
b.
The jurisdiction to repeal a patent by a decree of a court of
chancery, as an exercise of its ordinary powers, was sustained
Page 128 U. S. 361
in the case of
Attorney General v. Vernon, 1 Vernon
277. In that action, a bill was brought by the Attorney General
against Vernon and others to set aside a patent issued by the
Crown, on the ground that it was obtained by surprise and by false
particulars. It was insisted by the defendant's counsel that there
never had been any precedent of this nature to repeal letters
patent by an English bill in chancery, but that it was a case of
first impression, and they contended that the title under the
letters patent was one purely at law, and returnable there;
likewise, that there was a remedy by
scire facias. It was
also objected that the word "fraud," which, if anything, must give
jurisdiction to the court in the case, was not in the whole bill.
Also, among other things, it was objected that if letters patent
should be impeached by an English bill in chancery upon such
suggestions and pretensions as these, no patentee could be safe,
nor would the King's seal be of any force. To this it was replied
on the part of the King that he may sue in what court he pleases,
that the bill charges surprise and false particulars, and that
fraud is properly relievable here; that the King ought not to be in
a worse condition than a subject; that a nobleman would be relieved
of such a fraud put upon him by his servant, and that, if the King
could not be relieved in this case by an English bill, he would be
without remedy. Whereupon the Lord Keeper said:
"The question is, in short, whether there be a fraud or not? If
a fraud, then properly relievable here. It is not fit such a matter
as this should be stifled upon a plea, and therefore the Lord
Keeper overruled the plea and denied to save the benefit of it till
the hearing, because he would not give any countenance to such a
case."
So far as precedent is concerned, this case, which has never
been overruled, establishes the doctrine that in case of fraud in
the obtaining of a patent, a court of chancery, by virtue of that
fact, has jurisdiction to repeal or revoke it.
The case of
The King v. Butler, 3 Lev. 220, which was
heard in the House of Lords, was one where the King had made a
grant of a market by letters patent to Sir Oliver Butler, the
defendant. A writ of
scire facias was brought in the
Page 128 U. S. 362
Court of Chancery to repeal the grant, and the Lord Chancellor
gave judgment that it should be vacated, whereupon the matter was
brought by a writ of error to the House of Lords, and after
argument there, the peers requested the opinion of the judges then
attending in Parliament, who all unanimously agreed that the
judgment given in chancery ought to be affirmed, and delivered
their opinion accordingly. It was objected that the writ did not
lie, because there was a remedy by the common law, to-wit, by
assize of nuisance, where the matter should be tried by a jury and
by several judges, and not by one only, as it is in chancery; to
which they answered that the King has an undoubted right to repeal
a patent wherein he is deceived or his subjects prejudiced. And in
none of the cases cited was there any question whether the writ
would lie, but only the manner of pursuing it and other incident
matters. It was said that it was not unusual for the King to have
his remedy, as well as the subject also.
The whole text of the answers of the judges in this case seems
to imply that a jury was not necessary, but that the existence of
the record in the Court of Chancery was a sufficient foundation for
the proceeding there, though it might be brought in some other
court when the King had declared the patent forfeited or when there
had been office found. The judgment of the Court of Chancery was
therefore affirmed.
See, on this subject,
Queen v.
Aires, 10 Mod. 258, 354;
Queen v. Eastern Archipelago
Co., 1 El. & Bl. 310;
Cumming v. Forrester, 2
Jac. & Walk. 341.
But whatever may have been the course of procedure usual or
requisite in the English jurisprudence to enable the King to
repeal, revoke, or nullify his own patents, issued under his
prerogative right, it can have but little force in limiting or
restricting the measures by which the government of the United
States shall have a remedy for an imposition upon it or its
officers in the procurement or issue of a patent. We have no King
in this country; we have here no prerogative right of the Crown,
and letters patent, whether for inventions or for grants of land,
issue not from the President, but from the United States. The
President has no prerogative in
Page 128 U. S. 363
the matter. He has no right to issue a patent, and, though it is
the custom for patents for lands to be signed by him, they are of
no avail until the proper seal of the government is affixed to
them. Indeed, a recent act of Congress authorizes the appointment
of a clerk for the special purpose of signing the President's name
to patents of that character, and so far as patents for inventions
are concerned, whatever may have been the case formerly, since the
Act of July 8, 1870, they are issued without his signature and
without his name or his style of office being mentioned in them.
The authority for this procedure is embodied in the following
language of the Revised Statutes:
"SEC. 4883. All patents shall be issued in the name of the
United States of America, under the seal of the Patent Office, and
shall be signed by the Secretary of the Interior and countersigned
by the Commissioner of Patents, and they shall be recorded,
together with the specifications, in the Patent Office, in books to
be kept for that purpose."
This only expresses the necessary effect of the acts of
Congress. The authority by which the patent issues is that of the
United States of America. The seal which is used is the seal of the
Patent Office, and that was created by congressional enactment. It
is signed by the Secretary of the Interior, and the Commissioner of
Patents, who also countersigns it, is an officer of that
department. The patent, then, is not the exercise of any
prerogative power or discretion by the President, or by any other
officer of the government, but it is the result of a course of
proceeding
quasi-judicial in its character, and is not
subject to be repealed or revoked by the President, the Secretary
of the Interior, or the Commissioner of Patents when once issued.
See United States v. Schurz, 102 U.
S. 378.
It is not without weight in considering the jurisdiction of a
court of equity in regard to the power to impeach patents that an
appeal is provided from the decision of the Commissioner of Patents
to the Supreme Court of the District of Columbia, and that the
Revised Statutes enact as follows:
"SEC. 4915. Whenever a patent on application is refused,
Page 128 U. S. 364
either by the Commissioner of Patents or by the Supreme Court of
the District of Columbia upon appeal from the Commissioner, the
applicant may have remedy by bill in equity, and the court having
cognizance thereof, on notice to adverse parties and other due
proceedings had, may adjudge that such applicant is entitled,
according to law, to receive a patent for his invention, as
specified in his claim, or for any part thereof, as the facts in
the case may appear."
It is then further provided that if the adjudication be in favor
of the applicant, it shall authorize the Commissioner of Patents to
issue such patent upon the applicant's filing in the Patent Office
a copy of the adjudication.
These provisions, while they do not in express terms confer upon
the courts of equity of the United States the power to annul or
vacate a patent, show very clearly the sense of Congress that if
such power is to be exercised anywhere, it should be in the equity
jurisdiction of those courts. The only authority competent to set a
patent aside, or to annual it, or to correct it for any reason
whatever, is vested in the judicial department of the government,
and this can only be effected by proper proceedings taken in the
courts of the United States.
This subject has been frequently discussed in this Court, and
the principles necessary to its decision have been well
established. The case of
United States v.
Stone, 2 Wall. 525, was a bill in chancery brought
by the United States in the Circuit Court for the District of
Kansas to set aside a patent issued by the government to Stone, the
defendant. The question of the jurisdiction of the court to
entertain such a bill, which was denied by counsel for Stone, was
discussed at considerable length in their brief, and in the
argument of counsel for the United States the language of Chief
Justice Kent in
Jackson v. Lawton, 10 Johns. 24, was cited
to the following effect:
"The English practice of suing out a
scire facias by
the first patentee may have grown out of the rights of the
prerogative, and it ceases to be applicable with us. In addition to
the remedy by
scire facias, etc., there is another by bill
in the equity side of the Court of Chancery. Such a bill was
sustained
Page 128 U. S. 365
in the case of
Attorney General v. Vernon, 1 Vernon
277, to set aside letters patent obtained by fraud, and they were
set aside by a decree."
This extract from the brief of counsel in the
Stone
case is cited to show that the attention of the Court was turned to
this question, and the language of the opinion, as delivered by Mr.
Justice Grier, expresses in sententious terms the result arrived at
by this Court in regard to this entire question. It is as
follows:
"A patent is the highest evidence of title, and is conclusive as
against the government, and all claiming under junior patents or
titles, until it is set aside or annulled by some judicial
tribunal. In England, this was originally done by
scire
facias, but a bill in chancery is found a more convenient
remedy. Nor is fraud in the patentee the only ground upon which a
bill will be sustained. Patents are sometimes issued unadvisedly or
by mistake, where the officer has no authority in law to grant them
or where another party has a higher equity, and should have
received the patent. In such cases, courts of law will pronounce
them void. The patent is but evidence of a grant, and the officer
who issues it acts ministerially, and not judicially. If he issues
a patent for land reserved from sale by law, such patent is void
for want of authority. But one officer of the Land Office is not
competent to cancel or annul the act of his predecessor. That is a
judicial act, and requires the judgment of a court. It is contended
here by the counsel of the United States that the land for which a
patent was granted to the appellant was reserved from sale for the
use of the government, and consequently that the patent is void,
and, although no fraud is charged in the bill, we have no doubt
that such a proceeding in chancery is the proper remedy, and that
if the allegations of the bill are supported, that the decree of
the court below cancelling the patent should be affirmed."
We cite thus fully from this case because it is the first one in
which the questions now before us were fully considered and clearly
decided. In the previous case of
United
States v. Hughes, 11 How. 552, the same question
came before the court on demurrer. The court held that the demurrer
must
Page 128 U. S. 366
be overruled, saving that it cannot "be conceived why the
government should stand on a different footing from any other
proprietor." The case afterwards came again before this Court, and
is reported in
71 U. S. 4 Wall.
232, later than the
Stone case. The Court then said:
"It was the plain duty of the United States to seek to vacate
and annul the instrument, to the end that their previous engagement
might be fulfilled by the transfer of a clear title, the only one
intended for the purchaser by the act of Congress."
In the case of
Moore v. Robbins, 96 U. S.
530, this Court said, in a suit between private
citizens, and speaking of the issue of patents by the
government:
"If fraud, mistake, error, or wrong has been done, the courts of
justice present the only remedy. These courts are as open to the
United States to sue for the cancellation of the deed or
reconveyance of the land as to individuals, and if the government
is the party injured, this is the proper course."
In
Moffat v. United States, 112 U. S.
24, a decree of the circuit court setting aside a patent
as having been obtained by fraud was affirmed, and the same
doctrine was reasserted in
United States v. Minor,
114 U. S. 233.
Still later, in the case of
Colorado Coal & Iron Co. v.
United States, 123 U. S. 307, the
right of the court, by a proceeding in equity at the instance of
the Attorney General and in the name of the United States, to set
aside a patent for land was fully recognized, and the language used
in the case of
United States v. Minor, supra, was cited,
to the following effect.
"Where the patent is the result of nothing but fraud and
perjury, it is enough to hold that it conveys the legal title, and
it would be going quite too far to say that it cannot be assailed
by a proceeding in equity, and set a side as void, if the fraud is
proved, and there are no innocent holders for value."
The whole question was reviewed at great length by this Court at
its last term in the case of
United States v. San Jacinto Tin
Co., 125 U. S. 273,
when all the cases above mentioned and others were cited and
commented upon. The matter is thus summed up in the opinion of the
Court:
"But
Page 128 U. S. 367
we are of opinion that since the right of the government of the
United States to institute such a suit depends upon the same
general principles which would authorize a private citizen to apply
to a court of justice for relief against an instrument obtained
from him by fraud or deceit, or any of those other practices which
are admitted to justify a court in granting relief, the government
must show that, like the private individual, it has such an
interest in the relief sought as entitles it to move in the matter.
If it be a question of property, a case must be made in which the
court can afford a remedy in regard to that property; if it be a
question of fraud which would render the instrument void, the fraud
must operate to the prejudice of the United States, and if it is
apparent that the suit is brought for the benefit of some third
party, and that the United States has no pecuniary interest in the
remedy sought and is under no obligation to the party who will be
benefited to sustain an action for his use -- in short, if there
does not appear any obligation on the part of the United States to
the public, or to any individual, or any interest of its own, it
can no more sustain such an action than any private person could
under similar circumstances."
This language is construed by counsel for the appellee in this
case to limit the relief granted at the instance of the United
States to cases in which it has a direct pecuniary interest. But it
is not susceptible of such construction. It was evidently in the
mind of the court that the case before it was one where the
property right to the land in controversy was the matter of
importance, but it was careful to say that the cases in which the
instrumentality of the court cannot thus be used are those where
the United States has no pecuniary interest in the remedy sought,
and is also under no obligation to the party who will be benefited
to sustain an action for his use, and also where it does not appear
that any obligation existed on the part of the United States to the
public or to any individual. The essence of the right of the United
States to interfere in the present case is its obligation to
protect the public from the monopoly of the patent which was
procured by fraud, and it would be difficult to find language
Page 128 U. S. 368
more aptly used to include this in the class of cases which are
not excluded from the jurisdiction of the court by want of interest
in the government of the United States.
It is insisted that these decisions have reference exclusively
to patents for land, and that they are not applicable to patents
for inventions and discoveries. The argument very largely urged for
that view is the one just stated -- that in the cases which had
reference to patents for land, the pecuniary interest of the United
States was the foundation of the jurisdiction. This, however, is
repelled by the language just cited and by the fact that in more
than one of the cases, notably in
United States v. Hughes,
supra, the right of the government to sustain the suit was
based upon its legal or moral obligation to give a good title to
another party who had a prior and better claim to the land, but
whose right was obstructed by the patent issued by the United
States.
The case of
Mowry v.
Whitney, 14 Wall. 434, was a bill in chancery
brought by Mowry, in the Circuit Court for the Eastern District of
Pennsylvania, against Whitney, charging that Whitney's patent for a
mode of annealing and cooling cast-iron car wheels and an extension
of it made by the Patent Office, had been procured by fraud and
false swearing and praying that it and the extension might be
declared void and of no effect. To this bill Whitney demurred. The
demurrer was sustained by the court below, and from the decree
dismissing the bill, Mowry took an appeal to this Court, where it
was said "that the complainant could not, in his own right, sustain
such a suit." In giving its reasons for this, the Court said:
"We are of opinion that no one but the government, either in its
own name or the name of its appropriate officer or by some form of
proceeding which gives official assurance of the sanction of the
proper authority, can institute judicial proceedings for the
purpose of vacating or rescinding the patent which the government
has issued to an individual, except in the cases provided for in §
16 of the Act of July 4, 1836. The ancient mode of doing this in
the English courts was by
scire facias, and three classes
of cases are laid down in which this may be done."
One of these is
"when the King has granted
Page 128 U. S. 369
a thing by false suggestion, he may by
scire facias
repeal his own grant, citing 4 Inst. 88; Dyer, 197-198, and
Basset v. Torrington, 3 Dyer 276, 277. . . . The
scire
facias to repeal a patent was brought in chancery where the
patent was of record, and, though in this country the writ of
scire facias is not in use as a chancery proceeding, the
nature of the chancery jurisdiction and its mode of proceeding have
established it as the appropriate tribunal for the annulling of a
grant or patent from the government. This is settled, so far as
this Court is concerned, by the case of
United States v.
Stone, 2 Wall. 525."
The opinion then refers to
Attorney General v. Vernon
and
Jackson v. Lawton, already cited.
It is said that this language of the Court is
obiter,
and does not decide directly that a suit can be brought in chancery
to cancel or annul a patent issued by the United States government
for an invention. It is true that what the Court was called upon to
decide was that a private citizen could not bring such suit, but
evidently the reason given for it must be held to establish the
principle upon which the Court acted, and that reason was that the
private citizen could not do it because the right lay with the
government. The duty and the right of the government to bring an
action which would end in the destruction of the patent, and which
would thus protect everybody against the asserted monopoly of it,
was the reason why the private citizen could not for himself bring
such a suit.
Another reason given by the Court is that the fraud, if one
exists, must have been practiced on the government, which, as the
party injured, is the appropriate party to seek relief, and that a
suit by an individual could only be conclusive in result as between
the patentee and the party suing, and the patent would remain a
valid instrument as to all others, while, if the action was brought
by the government and a decree had to annul the patent, this would
be conclusive in all suits founded on the patent. Other reasons
were given showing that the United States was the appropriate party
to bring such a suit, and that the circuit court of the United
States, sitting in equity, was the proper tribunal in which to
bring it, all tending
Page 128 U. S. 370
to show that the reason why a private citizen could not have
such relief was that it belonged to the government.
The United States, by issuing the patents which are here sought
to be annulled, has taken from the public rights of immense value
and bestowed them upon the patentee. In this respect, the
government and its officers are acting as the agents of the people,
and have, under the authority of law vested in them, taken from the
people this valuable privilege and conferred it as an exclusive
right upon the patentee. This is property, property of a value so
large that nobody has been able to estimate it. In a former
argument in this Court it was said to be worth more than
twenty-five millions of dollars. This has been taken from the
people, from the public, and made the private property of the
patentee by the action of one of the departments of the government
acting under the forms of law, but deceived and misled, as the bill
alleges, by the patentee. That the government, authorized both by
the Constitution and the statutes to bring suits at law and in
equity, should find it to be its duty to correct this evil, to
recall these patents, to get a remedy for this fraud, is so clear
that it needs no argument, and we think we have demonstrated that
the proper remedy is the one adopted by the government in this
case.
But conceding that in regard to patents for land and in
reference to other transactions in which the government is a party,
the courts of equity have jurisdiction to correct mistakes, to give
relief for frauds, and to cancel contracts and other important
instruments, it is said that in reference to patents for inventions
and discoveries, the acts of Congress have provided another remedy
for frauds committed in obtaining them, and for the very class of
frauds set up in this bill. Counsel therefore contend that this
supersedes all others. This remedy is found in the following
provision of the Revised Statutes:
"SEC. 4920. In any action for infringement, the defendant may
plead the general issue, and, having given notice in writing to the
plaintiff or his attorney thirty days before, may prove on trial
anyone or more of the following special matters: "
Page 128 U. S. 371
"First, that for the purpose of deceiving the public, the
description and specification filed by the patentee in the Patent
Office was made to contain less than the whole truth relative to
his invention or discovery, or more than is necessary to produce
the desired effect; or,"
"Second, that he had surreptitiously or unjustly obtained the
patent for that which was in fact invented by another, who was
using reasonable diligence in adapting and perfecting the same;
or,"
"Third, that it had been patented or described in some printed
publication prior to his supposed invention or discovery thereof;
or,"
"Fourth, that he was not the original and first inventor or
discoverer of any material and substantial part of the thing
patented; or,"
"Fifth, that it had been in public use or on sale in this
country for more than two years before his application for a
patent, or had been abandoned to the public."
Prior to the year 1836, from the earliest enactments of patent
law, certain provisions had been incorporated in that law
authorizing a
scire facias to issue to declare a patent
void for want of invention by the patentee, and other matters,
which, though instituted by a private individual, was under the
control of the official attorneys of the government. This was
repealed by the act of 1836, which may be said to be the first real
and successful organization of the Patent Office and the system of
patent law in the United States. The law on this subject was
revised by the Act of Congress of July 8, 1870, 16 Stat. 198, and
the Revised Statutes of the United States, from which § 4920 is
quoted, contain the language applicable to this subject.
The statute of 1836 repealed the provision for a
scire
facias. It is now argued that the repeal of this provision,
together with the enactment of the provision of § 4920, show that
the only remedy for the improvident issuing of a patent is to be
found in the language of that section. These clauses, while they do
not in any general form declare that a person sued for an
infringement of a patent may set up as a defense that it was
Page 128 U. S. 372
procured by fraud or deceit, do in effect specify various acts
of fraud which the infringer may rely upon as a defense to a suit
against him founded upon that instrument. It is therefore urged
that because each individual affected by the monopoly of the patent
is at liberty, when he is sued for using it without license or
authority, to set up these defenses, the remedy which the United
States has, under the principles we have attempted to sustain, is
superseded by that fact. But a consideration of the nature and
effect of these different modes of proceeding in regard to the
patent will show that no such purpose can be inferred from these
clauses of the act of Congress.
In the first place, the right given to the infringer to make
this defense is a right given to him personally, and to him alone,
and the effect of a successful defense of this character by one
infringer is simply to establish the fact that, as between him and
the patentee, no right of action exists for the reasons set up in
such defense. But the patentee is not prevented by any such
decision from suing a hundred other infringers, if so many there
be, and putting each of them to an expensive defense, in which they
all, or some of them, may be defeated and compelled to pay, because
they are not in possession of the evidence on which the other
infringer succeeded in establishing his defense. On the other hand,
the suit of the government, if successful, declares the patent
void, sets it aside as of no force, vacates it or recalls it, and
puts an end to all suits which the patentee can bring against
anybody. It opens to the entire world the use of the invention or
discovery in regard to which the patentee had asserted a
monopoly.
This broad and conclusive effect of a decree of the court in a
suit of that character brought by the United States is so widely
different, so much more beneficial, and is pursued under
circumstances so much more likely to secure complete justice than
any defense which can be made by an individual infringer that it is
impossible to suppose that Congress, in granting this right to the
individual, intended to supersede or take away the more enlarged
remedy of the government. Some of these specifications of grounds
of defense are not
Page 128 U. S. 373
such as would ordinarily be sufficient in a court of equity to
set aside the patent, as "that it had been in public use or on sale
in this country for more than two years," or "that it had been
patented or described in some printed publication prior to his
supposed invention or discovery thereof." It is unnecessary to
decide whether these grounds now would be sufficient cause for
setting aside a patent in a suit by the United States, but they are
not of that general character which would give a court of equity
jurisdiction to do that, except as it may be said they are now
parts of the general system of the patent law.
A question almost identical with this was made in the House of
Peers in the case of
King v. Butler, 3 Levinz 220, as to
whether the judgment obtained by the King in the Court of Chancery
repealed the grant to Butler. It was answered by the judges to some
of the objections that
"it was not unusual for the King to have his remedy, as well as
the subject also, as for batteries, trespasses, etc., the King has
a remedy by information and indictment, and the party grieved by
his action."
The argument need not be further extended. There is nothing in
these provisions expressing an intention of limiting the power of
the government of the United States to get rid of a patent obtained
from it by fraud and deceit, and although the legislature may have
given to private individuals a more limited form of relief by way
of defense to an action by the patentee, we think the argument that
this was intended to supersede the affirmative relief to which the
United States is entitled, to obtain a cancellation or vacation of
an instrument obtained from it by fraud, an instrument which
affects the whole public, whose protection from such a fraud is
eminently the duty of the United States, is not sound.
The decree of the circuit court dismissing the bill of
plaintiff is reversed, and the case remanded to that court, with
directions to overrule the demurrer, with leave to defendants to
plead or answer, or both, within a time to be fixed by that
court.
MR. JUSTICE GRAY was not present at the argument, and took no
part in the decision of this case.
