Mowry v. Whitney,
81 U.S. 434 (1871)

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U.S. Supreme Court

Mowry v. Whitney, 81 U.S. 14 Wall. 434 434 (1871)

Mowry v. Whitney

81 U.S. (14 Wall.) 434


1. The ancient mode of annulling or repeating the King's patent was by scire facias generally brought in the chancery where the record of the instrument was found.

2. In modern times the court of chancery, sitting in equity, entertained a similar jurisdiction by bill when the ground of relief is fraud in obtaining the patent, and in this country it is the usual mode in all cases, because better adapted to the investigation and to the relief to be administered.

3. But scire facias could only be sued out in the English courts by the King or his attorney-general, except in cases where two patents had been granted for the same thing to different individuals, and the sixteenth section of the act of July 4, 1836, concerning patents for inventions, is based upon analogous principles.

4. Both upon this authority and upon sound principle no suit can be brought to set aside, annul, or declare void, a patent issued by the government, except in the class of cases above mentioned, unless brought in the name of the government or by the authority or permission of the Attorney-General, so as to be under his control.

Asa Whitney, of Philadelphia, had obtained, on the 25th April, 1848, a patent for fourteen years for an improvement in annealing and cooling cast iron car wheels. This patent expired, of course, by its terms on the 25th of April, 1862.

Just before its expiration -- that is to say, on the 21st of March, Albert Mowry, of Cincinnati, also obtained a patent for fourteen years, for a process for annealing car wheels, of which he professed to be the inventor.

In March, 1862, Whitney -- the expiration of his patent now approaching -- applied to the Commissioner of Patents for an extension of the patent for seven years more. This extension was applied for in pursuance of a provision of the Patent Act of 1848, [Footnote 1] which authorizes an extension where the patent has not been remunerative, and the act therefore

Page 81 U. S. 435

requires that the patentee, when applying for the extension, shall:

"Furnish to the Commissioner of Patents a statement in writing, under oath, of the ascertained value of the invention and of his receipts and expenditures sufficient in detail to exhibit a true and faithful account of loss and profit, in any manner accruing to him from and by reason of the said invention."

Whitney did furnish to the commissioner a statement which purported to be such as the act required, and accordingly the extension was granted April 25, 1862, for seven years from that date -- or in other words, until 25th of April, 1869.

On the 21st of March, 1866, Whitney filed a bill in the Circuit Court for the Southern District of Ohio to enjoin Mowry against proceeding in his business of annealing car wheels on the ground that he, Mowry, by his process of annealing was infringing his, Whitney's, patent, and it being decided in the circuit court April 5, 1867, on the hearing of the case, that Mowry was by his plan of annealing infringing Whitney's patent, the question of damages came up. This being referred to a master, Whitney, in order to swell his damages, sought to prove (as Mowry alleged) that his profits had been very large -- greatly larger than what he had sworn they were in the statement which he made before the commissioner when seeking his extension. [Footnote 2]

Hereupon, April 7, 1870, Mowry filed a bill in chancery in the court below representing the fact of Whitney's patent, and of the extension of it (annexing as exhibits all the patent, the certificate of extension, and all the affidavits and estimates on which the extension had been granted), setting forth his own patent, that he was sued by Whitney in a suit still pending, that in the progress of investigation necessary to his defense in that suit, he had discovered the fraud by which the extension was obtained, and praying that it might be declared that Whitney's letters, granted on the 25th of April, 1848, and extended on the 7th of April, 1862,

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were, and are void and of no effect from and after the 25th of April, 1862.

The Patent Act of 1836, [Footnote 3] it should be added, by its 16th section thus enacts:

"That whenever there shall be two interfering patents, or whenever a patent, on application shall have been refused on an adverse decision of a board of examiners on the ground that the patent applied for would interfere with an unexpired patent previously granted, any person interested in any such patent either by assignment or otherwise, in the one case, and any such applicant in the other case, 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 and declare either the patents void in the whole or in part or inoperative and invalid in any particular part or portion of the United States, according to the interests which the parties to such suit may possess in the patent or the inventions patented, and may also adjudge that such applicant is entitled according to the principles and provisions of this act to have and receive a patent for his invention as specified in his claim, or for any part thereof, as the fact of priority of right or invention shall in any such case be made to appear. And such adjudication, if it be in favor of the right of such applicant, shall authorize the commissioner to issue such patent on his filing a copy of the adjudication and otherwise complying with the requisitions of this act, provided however that no such judgment or adjudication shall affect the rights of any person except the parties to the action, and those deriving title from or under them, subsequent to the rendition of such judgment."

To the bill filed as above mentioned by Mowry, Whitney demurred on these two, among other, grounds:

1. That it appeared from the bill that the government of the United States was a necessary party complainant, but that the government was not made a party, nor was the suit brought at the instance of, nor by the authority, nor with the consent of the government.

2. That it appeared by the bill that the term for which

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the letters patent sought to be cancelled were granted and extended had expired before the commencement of the suit.

The court below sustained the demurrer on these grounds and dismissed the bill. From that decree Mowry took this appeal.

Page 81 U. S. 439

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