United States v. American Bell Telephone Co.
Annotate this Case
128 U.S. 315 (1888)
U.S. Supreme Court
United States v. American Bell Telephone Co., 128 U.S. 315 (1888)
United States v. American Bell Telephone Company
Argued October 9-10, 1888
Decided November l2, 1885
128 U.S. 315
APPEAL FROM THE CIRCUIT COURT OF THE UNITED
STATES FOR THE DISTRICT OF MASSACHUSETTS
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
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
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
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:
"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
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
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
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
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
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,
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
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
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.
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.
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:
"That 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."
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,"
"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,"
"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,
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.
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
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
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
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
subject matter thereof,"
"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
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
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
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. 66b, 68b.
The jurisdiction to repeal a patent by a decree of a court of chancery, as an exercise of its ordinary powers, was sustained
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
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
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,
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
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
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:
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
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
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
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: "
"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
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
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.
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