If.an application has been made for a patent for an invention,
and the applicant has once called for action, he cannot be deprived
of any benefits which flow from the ultimate action of the
tribunal, although that tribunal may unnecessarily, negligently, or
even wantonly, if that supposition were admissible, delay its
judgment.
Maxwell Land Grant Case, 121
U. S. 326, affirmed and followed to the point that a
suit between individuals to set aside an instrument for fraud can
only be sustained when the testimony in respect to the fraud is
clear, unequivocal, and convincing, and cannot be done upon a bare
preponderance of evidence which leaves the issue in doubt, and
that, if this be the settled rule in respect to suits between
individuals, it is much more so when the government attempts to set
aside its solemn patent; and if this is true when the suit is to
set aside a patent for land, which conveys for all time the title,
a fortiori it must be true when the suit is one to set
aside a patent for an invention which only grants a temporary
right.
The case which the counsel for appellant presents may be summed
up in these words: the application for this patent was duly filed.
The Patent Office after the filing had full jurisdiction over the
procedure; the applicant had no control over its action. We have
been unable to offer a syllable of testimony tending to show that
the applicant ever in any way corrupted or attempted to corrupt any
of the officials of the department.
Page 167 U. S. 225
We have been unable to show that any delay or postponement was
made at the instance or on the suggestion of the applicant. Every
communication that it made during those years carried with it a
request for action, yet because the delay has resulted in enlarged
profits to the applicant, and the fact that it would so result
ought to have been known to it, it must be assumed that in some way
it did cause the delay, and having so caused the delay ought to
suffer therefor. There is seldom presented a case in which there is
such an absolute and total failure of proof of wrong.
Before the government is entitled to a decree cancelling a
patent for an invention on the ground that it had been fraudulently
and wrongfully obtained, it must, as in the case of a like suit to
set aside a patent for land, establish the fraud and the wrong by
testimony which is clear, convincing and satisfactory.
Congress has established a department with officials selected by
the government, to whom all applications for patents must be made;
has prescribed the terms and conditions of such applications, and
entrusted the entire management of affairs of the department to
those officials, and when an applicant for a patent complies with
the terms and conditions prescribed and files his application with
the officers of the department, he must abide their action, and
cannot be held to suffer or lose rights by reason of any delay on
the part of those officials, whether reasonable or unreasonable,
unless such delay has been brought about through his corruption of
the officials or through his inducement, or at his instance, and
proof that they were in fault, that they acted unwisely,
unreasonably, and even that they were culpably dilatory casts no
blame on him, and abridges none of his rights.
The evidence in this case does not in the least degree tend to
show any corruption by the applicant of any of the officials of the
department, or any undue or improper influence exerted or attempted
to be exerted by it upon them, and, on the other hand, does
affirmatively show that it urged promptness on the part of the
officials of the department, and that the delay was the result of
the action of those officials.
If the circumstances do not make it clear that this delay on the
part of the officials was wholly justified, they do show that it
was not wholly unwarranted, and that there were reasons for the
action of such officials which at least deserve consideration and
cannot be condemned as trivial.
It is unnecessary to determine whether there are two separate
inventions in the transmitter and the receiver, or whether the
patent of 1891 is for an invention which was covered by the patent
of 1880, as the judgment of the Patent Office, the tribunal
established by Congress to determine such questions, was adverse to
the contention of the government, and such judgment cannot be
reviewed in this suit.
Suits may be maintained by the government in its own courts to
set aside one of its patents not only when it has a proprietary and
pecuniary interest in the result, but also when it is necessary in
order to enable it to discharge its obligations to the public, and
sometimes when the purpose and effect are simply to enforce the
rights of an individual; in
Page 167 U. S. 226
the former cases, it has all the privileges and rights of a
sovereign, the statutes of limitation do not run against it, the
laches of its own officials does not debar its right; but when it
has no proprietary or pecuniary result in the setting aside of the
patent, is not seeking to discharge its obligations to the public,
when it has brought the suit simply to help an individual, making
itself, as it were, the instrument by which the right of that
individual against the patentee can be established, then it becomes
subject to the rules governing like suits between private
litigants.
In establishing the Patent Office, Congress created a tribunal
to pass upon all questions of novelty and utility, and it gave to
that office exclusive jurisdiction in the first instance, and
specifically provided under what circumstances its decisions might
be reviewed, either collaterally or by appeal, and when Congress
has thus created a tribunal to which it has given exclusive
determination in the first instance of certain questions of fact
and has specifically provided under what circumstances that
determination may be reviewed by the courts, the argument is a
forcible one that such determination should be held conclusive upon
the government, subject to the same limitations as apply in suits
between individuals.
On February 1, 1893, the United States filed in the Circuit
Court of the United States in and for the District of Massachusetts
a bill in equity against the American Bell Telephone Company and
Emile Berliner, praying a decree to set aside and cancel patent No.
463,569, issued on November 17, 1891, to the telephone company, as
assignee of Berliner. Upon amended pleadings and proofs, the
circuit court on January 3, 1895, 65 F. 86, entered a decree as
prayed for. On appeal to the Court of Appeals for the First
Circuit, this decree was on May 18, 1895, reversed, and a decree
entered directing a dismissal of the bill. 68 F. 542. Thereupon the
United States took an appeal to this Court. A motion was made to
dismiss the appeal for want of jurisdiction, which was denied,
159 U. S. 548, and
the case was argued upon the merits.
As stated by counsel for the appellant, four grounds for relief
were presented and discussed in the circuit court. Those grounds
are:
"1. That the delay of the application in the office for thirteen
years was, under the circumstances alleged in the bill, unlawful
and fraudulent."
"2. That a patent, issued November 2, 1880, upon a division of
the original application, covers the same invention as
Page 167 U. S. 227
that covered by the patent in suit, and exhausted the power of
the commissioner as to that invention."
"3. That the patent is not for the same invention which was
described in the application as filed."
"4. That, taking the application to date from the time when it
was made by amendment to cover the invention described and claimed
in the patent as issued, it was barred by public use for more than
two years."
By that court only the first two were considered, and the
argument in the court of appeals was confined to those
questions.
Page 167 U. S. 237
MR. JUSTICE BREWER, after stating the facts in the foregoing
language, delivered the opinion of the court.
This is a suit by the United States to set aside a patent for an
invention as wrongfully issued. It is, we believe, the first
Page 167 U. S. 238
case in this Court in which upon proofs such an application has
been presented. The right of the United States to maintain such a
suit was affirmed in
United States v. American Bell Telephone
Co., 128 U. S. 315. The
question now is whether upon the facts disclosed in this record,
the relief prayed for ought to be awarded. It becomes, therefore, a
matter of moment to determine under what circumstances and upon
what conditions the United States are entitled to have a patent,
issued in due course of law, set aside and cancelled.
Many cases have come to this Court in which patents for lands
have been sought to be set aside, and the rules controlling such
suits have been frequently considered. Such decisions will
naturally throw light upon the question here presented, though
before adverting to them it may be well to note the difference
between patents for land and patents for inventions. While the same
term is used, the same grantor is in each, and, although each vests
in the patentee certain rights, yet they are not in all things
alike. The patent for land is a conveyance to an individual of that
which is the absolute property of the government, and to which, but
for the conveyance, the individual would have no right of title. It
is a transfer of tangible property; of property in existence before
the right is conveyed; of property which the government has the
full right to dispose of as it sees fit, and may retain to itself
or convey to one individual or another, and it creates a title
which lasts for all time. On the other hand, the patent for an
invention is not a conveyance of something which the government
owns. It does not convey that which, but for the conveyance, the
government could use and dispose of as it sees fit, and to which no
one save the government has any right or title except for the
conveyance. But for the patent, the thing patented is open to the
use of anyone. Were it not for this patent, anyone would have the
right to manufacture and use the Berliner transmitter. It was not
something which belonged to the government before Berliner invented
it. It was open to the manufacture and use of anyone, and anyone
who knew how could contrive, manufacture, and use the instrument.
It conveyed to Berliner, so far as
Page 167 U. S. 239
respects rights in the instrument itself, nothing that he did
not have theretofore. The only effect of it was to restrain others
from manufacturing and using that which he invented. After his
invention, he could have kept the discovery secret to himself. He
need not have disclosed it to anyone. But in order to induce him to
make that invention public, to give all a share in the benefits
resulting from such an invention, Congress, by its legislation made
in pursuance of the Constitution, has guarantied to him an
exclusive right to it for a limited time, and the purpose of the
patent is to protect him in this monopoly, not to give him a use
which, save for the patent, he did not have before, but only to
separate to him an exclusive use. The government parted with
nothing by the patent. It lost no property. Its possessions were
not diminished. The patentee, so far as a personal use is
concerned, received nothing which he did not have without the
patent, and the monopoly which he did receive was only for a few
years. So the government may well insist that it has higher rights
in a suit to set aside a patent for land than it has in a suit to
set aside a patent for an invention. There are weightier reasons
why the government should not be permanently deprived of its
property, through fraudulent representations or other wrongful
means, than there are for questioning the validity of a temporary
monopoly or depriving an individual of the exclusive use for a
limited time of that whose actual use he claims to have made
possible, and which, after such time, will be open and free to all.
Bearing in mind this distinction, let us inquire upon what
conditions the government may maintain a suit to set aside a patent
for land.
These suits may be conveniently grouped in three classes: first,
where, the government being the only party interested, the patent
is charged to have been obtained by fraud in representations or
conduct; second, where the land by appropriate reservation is not
subject to patent, but is nevertheless erroneously patented; third,
where the land, though subject to patent in the ordinary
administration of the land office, is patented to the wrong person
either through fraud or by reason of mistake or inadvertence. In
the first class are the following
Page 167 U. S. 240
cases;
United States v.
Hughes, 11 How. 552;
United States v.
Throckmorton, 98 U. S. 61;
United States v. Atherton, 102 U.
S. 372;
Moffat v. United States, 112 U. S.
24;
United States v. Minor, 114 U.
S. 233;
Maxwell Land Grant Case, 121 U.
S. 325;
Colorado Coal & Iron Co. v. United
States, 123 U. S. 307;
United States v. San Jacinto Tin Co., 125 U.
S. 273;
United States v. Iron Silver Mining
Co., 128 U. S. 673;
United States v. Hancock, 133 U.
S. 193;
United States v. Trinidad Coal & Coking
Co., 137 U. S. 160;
United States v. Budd, 144 U. S. 154;
San Pedro &c. Co. v. United States, 146 U.
S. 120. In the second are these:
United
States v. Stone, 2 Wall. 525;
Leavenworth,
Lawrence &c. Railroad v. United States, 92 U. S.
733;
McLaughlin v. United States, 107 U.
S. 526;
Western Pacific Railroad v. United
States, 108 U. S. 510;
Mullan v. United States, 118 U. S. 271. And
in the third the following:
Hughes v. United
States, 4 Wall. 232;
United States v.
Beebe, 127 U. S. 338;
United States v. Marshall Mining Co., 129 U.
S. 579;
United States v. Missouri, Kansas &c.
Railway, 141 U. S. 358;
United States v. Southern Pacific Railroad, 146 U.
S. 570.
The second and third classes are not paralleled in this case,
for it is not claimed that there was no invention, or that the
patent issued to the wrong party. The decisions in those classes
need not be considered. The first class comprises all cases in
which the land, though subject to patent and therefore within the
jurisdiction of the Land Department, was charged to have been
patented in consequence of fraudulent representations or conduct on
the part of the patentee. The representations may have been as to
the matter of right or the matter of quantity. The patentee may
have been entitled to no land, or to less, or a different tract
than that patented. In any event, fraud was the basis of the relief
sought, and as fraud, actual or constructive, in the issue of the
patent is the burden of this suit, we will quote from the opinions
in some of these cases. In the
Maxwell Land Grant Case,
Mr. Justice Miller, delivering the opinion of the Court, said (p.
121 U. S.
381):
"We take the general doctrine to be that, when in a court of
equity it is proposed to set aside, to annul, or to correct a
Page 167 U. S. 241
written instrument for fraud or mistake in the execution of the
instrument itself, the testimony on which this is done must be
clear, unequivocal, and convincing, and that it cannot be done upon
a bare preponderance of evidence which leaves the issue in doubt.
If the proposition, as thus laid down in the cases cited, is sound
in regard to the ordinary contracts of private individuals, how
much more should it be observed where the attempt is to annul the
grants, the patents, and other solemn evidences of title emanating
from the government of the United States under its official seal.
In this class of cases, the respect due to a patent, the
presumption that all the preceding steps required by the law had
been observed before its issue, the immense importance and
necessity of the stability of titles dependent upon these official
instruments, demand that the effort to set them aside, to annul
them, or to correct mistakes in them should only be successful when
the allegations on which this is attempted are clearly stated and
fully sustained by proof. It is not to be admitted that the titles
by which so much property in this country and so many rights are
held, purporting to emanate from the authoritative action of the
officers of the government, and, as in this case, under the seal
and signature of the President of the United States himself, shall
be dependent upon the hazard of successful resistance to the whims
and caprices of every person who chooses to attack them in a court
of justice; but it should be well understood that only that class
of evidence which commands respect, and that amount of it which
produces conviction, shall make such an attempt successful."
In
Colorado Coal Co. v. United States, Mr. Justice
Matthews, after quoting part of the foregoing, adds (p.
123 U. S.
317):
"It thus appears that the title of the defendants rests upon the
strongest presumptions of fact, which, although they may be
rebutted, nevertheless can be overthrown only by full proofs to the
contrary, clear, convincing, and unambiguous. The burden of
producing these proofs and establishing the conclusion to which
they are directed rests upon the government. Neither is it relieved
of this obligation by the negative nature of the proposition it is
bound to establish. It is,
Page 167 U. S. 242
indeed, sometimes said that a negative is incapable of proof,
but this is not a maxim of the law. In the language of an eminent
text writer:"
"When the negative ceases to be a simple one -- when it is
qualified by time, place, or circumstance -- much of this objection
is removed, and proof of a negative may very reasonably be required
when the qualifying circumstances are the direct matter in issue,
or the affirmative is either probable in itself, or supported by a
presumption, or peculiar means of proof are in the hands of the
party asserting the negative."
Then, after quotations from many authorities, the learned
justice closes the discussion with these words from 1 Greenleaf on
Evidence, sec. 80:
"So where the negative allegation involves a charge of criminal
neglect of duty, whether official or otherwise; or fraud; or the
wrongful violation of actual lawful possession of property, the
party making the allegation must prove it, for in these cases the
presumption of law, which is always in favor of innocence and quiet
possession, is in favor of the party charged."
In
United States v. Marshall Mining Company, Mr.
Justice Miller again refers to this matter, saying (p,
129 U. S.
589):
"The dignity and character of a patent from the United States is
such that the holder of it cannot be called upon to prove that
everything has been done that is usual in the proceedings had in
the Land Department before its issue, nor can he be called upon to
explain every irregularity, or even impropriety, in the process by
which the patent is procured."
With these declarations of the law controlling such cases, we
proceed to consider that which, according to the brief of counsel
for the government, is the principal matter in this case. We quote
their words:
"The delay in the office is the great fact in the case. It
determined the bringing of the suit, stands in the forefront of the
bill, was the principal question argued in both courts below, and
occupies the chief space in the decisions rendered. It is not set
up as laches, nor as a ground of forfeiture under any provision of
the law or rule of the Patent Office, but as a course of conduct in
the nature of fraud on the public. "
Page 167 U. S. 243
What was the delay in this case? The application by Berliner was
made on June 4, 1877, he having filed a caveat on April 14, 1877.
In 1878, and prior to October 23, the telephone company purchased
Berliner's invention, and on November 17, 1891, a patent was issued
to the telephone company, as assignee of Berliner. The application
was therefore pending in the department fourteen years, during
thirteen of which the invention was the property of the telephone
company. The effect of this, it is said, is to prolong for all
practical purposes the telephone monopoly during the lifetime of
this patent, and in this way: on March 7, 1876, patent No. 174,465
was issued to Alexander Graham Bell, in which patent, as alleged in
the bill and admitted in the answer, were described and claimed "a
method of and apparatus for transmitting sound by means of an
undulatory current of electricity." This was the original telephone
patent. And it signified that Bell invented the telephone. That
patent has expired, and all the monopoly which attaches to it alone
has ceased, and the right to use that invention has become public
property. But while he invented the telephone, the apparatus he
devised was inefficient for public uses. Berliner invented
something by which, taken in connection with Edison's and Blake's
inventions, Bell's undulatory current could be made practically
available for carrying on conversation at long distances. In other
words, the telephone, as we use it,-that which has become such an
important factor in the commercial and social life of today -- does
not embody simply the invention of Bell, but also those of Edison,
Blake, and Berliner. So that, while the public has today, by reason
of the expiration of the Bell patent, the right to use as it
pleases his invention, such right is a barren one, and the
telephone monopoly is practically extended to the termination of
the Berliner patent, and this extension of the time of the monopoly
has been accomplished by means of the delay in the issue of the
Berliner patent -- the long pendency of the application in the
Patent Office. In order that the contention of the government may
be clearly presented, and in view of the importance of this
question, we may properly quote at some length from the brief of
counsel:
Page 167 U. S. 244
"In the present case, Mr. Bell's patent of 1876 covered broadly
the process of transmitting sound by means of an undulatory
electric current, as distinguished from an interrupted or broken
current, no matter how produced. His patent showed a transmitter
capable of producing such a current, but so feebly that its use was
limited to short distances. Afterwards Mr. Berliner discovered, we
will say, that the undulatory current necessary to transmit speech
can be produced by means of another form of transmitter -- one
operating by variation of pressure between its electrodes at their
point of contact. But as the only function of the instrument was to
produce an undulatory current, and as the use of that current,
however produced, was covered by Mr. Bell's invention, it follows
that the instrument was subject to two independent monopolies."
"Later, we will say, Mr. Edison discovered that the use of
carbon as the material for the construction of the electrodes of
the Berliner transmitter gave to that instrument a greatly
increased power and reach of operation. Later still, Mr. Blake
devised a particular combination of carbon and metallic electrodes,
with mechanism for their mounting, which secured an improved ease
and permanence of adjustment and superior adaptation to common use.
Mr. Bell hit upon the true principle, in relation to the kind of
current to be employed, and was justly entitled to a patent for it,
although the range of his transmitter may have been but a few
hundred feet. Mr. Berliner, we will say, hit upon the true
principle underlying the operation of the microphone, and was
entitled to his patent, although the mechanism he used in the
embodiment of his thought was so unstable in its adjustment as to
make it of uncertain value. The inventions of Mr. Edison and Mr.
Blake completed the instrument, and made possible the talking
telephone in every man's house, the city exchange, and the long
distance line from city to city."
"It thus happened that the Blake transmitter introduced into
public use by the Bell Company in 1878, and familiar to us all, was
the embodiment in one piece of mechanism, and its use, of four
distinct inventions made by four different men.
Page 167 U. S. 245
That company was the owner of all the inventions. For Mr. Bell's
invention it held patents issued in 1876 and 1877; for Mr. Blake's,
patents were issued in 1881, and for the others, applications were
on file subject to its control."
"Mr. Bell's invention was one of the first rank -- nothing less
than the discovery of a new law of nature. Mr. Berliner's invention
was a beautiful intellectual conception of a mode of operation. Mr.
Edison's was the discovery of a new property of carbon. Mr. Blake's
was an ingenious and a practical utilization of the three. Mr.
Bell's invention lies at the foundation of the art of telephony.
Mr. Edison's and Mr. Blake's have done more to make the art of
practical value than all others following Mr. Bell."
"We assume that it was not possible to take out patents for all
these inventions at the same time, and, so far as that was not
possible, the overlapping and prolongation of the monopolies
created by the patents in the use of the carbon microphone could
not be avoided without denying to some one or more of the inventors
his rights under the law. But does it follow that the Bell Company
was entitled of right to hold control of the microphone under the
broad claims of the Bell patent and the construction and
combination claims of the Blake patents, and nurse the applications
for the other inventions in the office, taking out a patent on
Berliner's just in time to overlap Bell's, and on Edison's in time
to overlap Berliner's, and so secure a monopoly on the some
transmitter, used in the same way to produce the same result, for
three times the period fixed by the statute for the duration of a
patent?"
"It needs no lawyer's argument to make manifest the inherent
moral wrongfulness of such a proceeding towards the public. Every
right-minded man will feel it instinctively. Would it be a legal
wrong?"
After discussing the injury to the public which results from the
conduct described, they add:
"Hence, a man who is enjoying a monopoly of a thing under one
patent, and is at the same time prosecuting an application for
another patent which will give him a monopoly of
Page 167 U. S. 246
the same thing for a further period, is bound to speed his
application."
It will be perceived that it is conceded that some delay is
unavoidable. In the very nature of things, that is so. It is not
possible that an application for a patent can be considered and
determined on the instant. So it is not the fact, but the
excessiveness, of the delay of which complaint is made. The mere
fact of delay does not therefore operate to deprive the inventor of
his legal rights. Before he can be punished, it must be shown that
he has been guilty of a wrong -- that he has caused the delay. It
matters not whether the delay be reasonable or unreasonable, for a
brief time or for many years, if the applicant is not responsible
for it. Whatever may be the injury to the public, if the delay is
caused solely through the negligence or inattention of the tribunal
before which the application is pending, it is something for which
the applicant is not responsible, and which does not affect his
legal rights. There is often great delay in suits in the courts.
cases not infrequently are argued before the highest courts and not
decided by them for weeks and sometimes for years. Whatever effect
such delay may have upon the interests of others or of the public,
so long as it results from the mere nonaction of the courts, the
rights of the suitor are unaffected. He cannot be punished on
account of the delay of the tribunal before which he is presenting
his suit.
Neither can a party pursuing a strictly legal remedy be adjudged
in the wrong if he acts within the time allowed, and pursues the
method prescribed by the statute. If the statute gives him five
years within which to bring an action on a note, he cannot be
denied relief simply because he waits four years and eleven months.
If he has two years after a judgment against him within which to
take an appeal, he may wait until the last day of the two years.
Under section 4886, Rev.Stat., an inventor has two years from the
time his invention is disclosed to the public within which to make
his application, and unless an abandonment is shown during that
time, he is entitled to a patent, and the patent runs, as any other
patent, for seventeen years from its date. He cannot
Page 167 U. S. 247
be deprived of this right by proof that, if he had filed his
application immediately after the invention, the patent would have
been issued two years earlier than it was, and the public therefore
would have come into possession of the free use of the invention
two years sooner. The statute has given this right, and no
consideration of public benefit can take it from him. His right
exists because Congress has declared that it should. It will not do
to say that because Congress has declared that seventeen years is
the life of a patent, seventeen years is the limit of the possible
monopoly, for the same legislation that gives seventeen years as
the life of a patent gives two years within which an application
for a patent may be made, and during that time, as well as while
the application is pending in the department, the applicant has
practically, if not legally, an exclusive use. A party seeking a
right under the patent statutes may avail himself of all their
provisions, and the courts may not deny him the benefit of a single
one. These are questions not of natural, but of purely statutory,
right. Congress, instead of fixing seventeen, had the power to fix
thirty, years as the life of a patent. No court can disregard any
statutory provisions in respect to these matters on the ground
that, in its judgment, they are unwise or prejudicial to the
interests of the public.
And in this connection it is also well to notice these facts:
section 4888, Rev.Stat., requires an inventor to make application
in writing to the Commissioner of Patents. That and the two or
three succeeding sections prescribe what the application shall
state, and by what it shall be accompanied. Section 4893 provides
that, on the filing of the application and the payment of fees,
"the Commissioner of Patents shall cause an examination to be
made of the alleged new invention or discovery, and if on such
examination it shall appear that the claimant is justly entitled to
a patent under the law, and that the same is sufficiently useful
and important, the commissioner shall issue a patent therefor."
Section 4894 reads:
"All applications for patents shall be completed and prepared
for examination within two years after the filing of the
application, and in default thereof, or upon failure of the
applicant
Page 167 U. S. 248
to prosecute the same within two years after any action therein,
of which notice shall have been given to the applicant, they shall
be regarded as abandoned by the parties thereto unless it be shown
to the satisfaction of the Commissioner of Patents that such delay
was unavoidable."
Certain rules of procedure have been prescribed by the
Commissioner of Patents, and a certain routine of practice has
become established in that department. Now all these matters of
statutory enactments, rules of procedure, and routine of practice
are things over which an applicant has no control. When he has once
filed his application, complying with the statutory requirements,
then the Patent Office takes possession of the matter. It
determines when and how it will act, and the applicant can only ask
and wait.
And why should he be called upon to do more? He comes before the
tribunal which the government has established and presents his
application. Why should the validity of the grant which that
tribunal finally makes depend in any degree upon the number of
times he has repeated his application? The true rule is that if
application has been made, and the applicant has once called for
action, he cannot be deprived of any benefits which flow from the
ultimate action of the tribunal, although that tribunal may
unnecessarily, negligently, or even wantonly, if that supposition
were admissible, delay its judgment. If the public is interested in
prompt action, if the government, which represents the public,
thinks that more speed on the part of its tribunals is essential,
it is the government which is called upon to act, and the applicant
may with propriety wait until either the tribunal has acted or
until the government, having regard for the public interest, has
interfered to compel action. Accepting the statement of counsel as
to the facts to be correct in all its fullness, consider what would
have been the ruling of a court if an application had been made to
it based upon those facts. Suppose the applicant had presented its
petition for a mandamus to compel prompt action on the part of the
patent officials, and said:
"I have applied for and am entitled to a patent. It will be
issued after a while without any judicial
Page 167 U. S. 249
compulsion. I can make large profits if the Patent Office will
be dilatory, and yet I ask a mandamus to compel its immediate
action,"
would not the ruling have been:
"By your own showing, you are entitled to no relief; you have no
cause of complaint. It is the government, representing the public,
which alone can complain."
And if it could obtain no assistance by a suit in advance, can
it be punished indirectly by being deprived of that which was
finally awarded to it?
Much is said in the briefs and in the arguments about the
practical continuance of the telephone monopoly. It is well to
understand exactly what is meant thereby. No one questions that the
Bell patent has expired, and that all of his invention is free to
the use of the public. It is not denied that Berliner's invention
is something independent and distinct from the Bell invention. It
is the combination of these inventions with those of Blake and
Edison which make the instrument in commercial use, and because
this is the most serviceable, it is the one that the public insists
upon having. But each invention has independent rights. It loses
nothing because, when united with another, it results in an
instrument more valuable than either alone will give. Suppose that
at the expiration of this Berliner patent some new invention shall
be made by which, in connection with those already free to the
public, an instrument can be manufactured far surpassing in utility
that used today, and the Bell Company shall purchase that invention
the public, which always insists on having the best and most
serviceable, will undoubtedly take the new instrument, and in that
way it may happen that what is called the "telephone monopoly" is
practically still further continued. But surely that does not
abridge the legal rights of anyone. The inventor of the latest
addition is entitled to full protection, and if the telephone
company buys that invention it is entitled to all the rights which
the inventor had. All that the patent law requires is that, when a
patent expires, the invention covered by that patent shall be free
to everyone, and not that the public has the right to the use of
any other invention, the patent for which has not expired, and
which adds to the utility and advantage
Page 167 U. S. 250
of the instrument made as the result of the combined
inventions.
Counsel seem to argue that one who has made an invention, and
thereupon applies for a patent therefor, occupies, as it were, the
position of a
quasi-trustee for the public; that he is
under a sort of moral obligation to see that the public acquires
the right to the free use of that invention as soon as is
conveniently possible. We dissent entirely from the thought thus
urged. The inventor is one who has discovered something of value.
It is his absolute property. He may withhold the knowledge of it
from the public, and he may insist upon all the advantages and
benefits which the statute promises to him who discloses to the
public his invention. He does not make the law. He does not
determine the measure of his rights. The legislative body,
representing the people, has declared what the public will give for
the free use of that invention. He cannot be heard in the courts to
say that it is of such value that he is entitled to a larger and
longer monopoly; that he is not fully compensated for the great
benefit which his invention has bestowed by the pecuniary receipts
during seventeen years. No representative of the public is at
liberty to negotiate with him for a new and independent contract as
to the terms and conditions upon which he will give up his
invention. He must come under the dominion of the statute, and take
that which the public has proffered its willingness to give. As the
lawmaking power has prescribed what the public will give, specified
the terms and conditions of purchase, indicated the time and
methods of determining the right of compensation, he on his part
has an absolute legal right to avail himself of all the provisions
thus made. It is not, of course, doubted that the courts, in
construing the patent as all other statutes, must have regard to
the spirit as well as the letter. That simply requires that courts
shall ascertain their true meaning, but when that is ascertained,
the applicant for a patent is entitled to all the benefits which
those statutes thus construed give.
What are the evidences of wrong in this matter of delay? It may
have been caused either by the negligent or wrongful
Page 167 U. S. 251
action of the officers of the department, and without any
connivance, assistance, or concurrence on the part of the
applicant, or it may have been brought about by the applicant,
either through its corruption of the public officers or through
other misconduct on its part. If the fault is wholly that of the
department, the applicant ought not to suffer therefor. While, on
the other hand, if its conduct has been wrongful, it may and ought
to suffer. There is no presumption against the applicant. If a
tribunal charged with official action delays such action, whatever
of presumption surrounds the delay attaches to the tribunal, and,
no evidence of wrong being given, the presumption would be that the
delay was at the instance of the tribunal, and not caused by the
applicant. The government, therefore, in order to make out its
case, must affirmatively show that the delay has been caused in
some way by the conduct of the applicant, and before its patent can
be set aside, the government must, in accordance with the rules
laid down in respect to land patents, establish that fact clearly.
It may not rest on mere inferences, mere suggestions, but must
prove the wrong in such a manner as to satisfy the judgment before
it can destroy that which its own agents have created. We reiterate
what was said by Mr. Justice Miller for the Court in the
Maxwell Land Grant Case, that a suit between individuals
to set aside an instrument for fraud can only be sustained when the
testimony in respect to the fraud is clear, unequivocal, and
convincing, and cannot be done upon a bare preponderance of
evidence which leaves the issue in doubt, and that, if this be the
settled rule in respect to suits between individuals, it is much
more so when the government attempts to set aside its solemn
patent. And we may here again repeat that, if this is true when the
suit is to set aside a patent for land, which conveys for all time
the title,
a fortiori it must be true when the suit is one
to set aside a patent for an invention, which only grants a
temporary right.
What evidence has the government produced? We premise by saying
that there is not a scintilla of testimony as to any corruption of
the officers of the department by the defendants, or any attempt at
such corruption. Counsel do not
Page 167 U. S. 252
put the finger on a single fact tending to show that any money
was ever paid to any official of the Patent Office, or that any
undue influence was ever attempted to be exerted upon or improper
suggestion made to anyone. So far as the record discloses, there
never was an intimation made to a single official that he could
profit in any way by a moment's delay. All thought of wrong in this
respect may therefore be put aside. If there was no corruption on
the part of the defendants, what did they do that calls for
condemnation? And we turn to the brief of the learned counsel for
the government to see what evidences of wrong they have found in
the record. After noting that their inquiry begins at June 9, 1882,
thus impliedly conceding that there is no reason to question the
delay up to that time (a period of five years), they call attention
to the subsequent correspondence between the solicitor in charge of
the application and the officials of the department, which, so far
as is material, is as follows:
"On June 9, 1882, the examiner wrote to the solicitor as
follows:"
" As at present advised, it is believed that the claims
presented may be allowed, but final action in this case must be
suspended in view of probable interferences with other pending
applications, which will be declared as soon as practicable."
"On October 8, 1883, sixteen months later, the solicitor wrote
as follow:"
" In June, 1882, I received an official letter dated the 9th of
that month, saying that 'the claims presented may be allowed, but
final action is suspended in view of probable interferences.' Since
then I have been awaiting the official action. I beg to call
attention to the case, and ask that it may receive action."
"October 23, 1883, the examiner wrote as follows:"
" In response to applicant's letter filed October 9, 1883, it is
stated that further action in this case on the part of the office
must be still further postponed until the conditions of interfering
applications will permit the declaration of interference, which
seems unavoidable. "
Page 167 U. S. 253
"On February 19, 1886, two years and four months later, the
solicitor wrote as follows:"
" The specification is hereby amended as follows: erase
amendment O, filed December 16, 1881. Erase claims 3, 7, 8, 10, and
11, and change number of claims 4, 5, 6, 7, and 9 to 3, 4, 5, 6,
and 76."
"This amendment contained nothing material to the present
discussion."
"March 17, 1886, the examiner wrote as follows:"
" In response to amendment of February 19, 1886, applicant is
advised that the broad claims involving the idea of a variable
pressure contact telephone will probably be involved in an
interference with a pending application or applications of another
applicant, and that said applicant has been advised that he must
show that the office action taken in the matter of his application
is not a sufficient answer thereto on or before the 1st of April,
1886. In the meanwhile, this application will be suspended from
further action."
"August 13, 1886, five months later, the solicitor wrote:"
" I desire to be informed of the present status of this case,
and to be advised if the office is awaiting any action on the part
of the applicant. It is desired that no rights should be lost by
inaction."
"August 19, 1886, the examiner wrote as follows:"
" In response to applicant's letter of the 13th inst., he is
hereby advised that the delay in this case is a matter over which
he has no control, except it be, perhaps, in the matter of urging
an early interference. The interference will be declared as soon as
the other applicants are in condition, if it be decided that they
are entitled to the same. The office is awaiting no action on the
part of the applicant, and the delay is through no fault of
his."
After these quotations, counsel observe as follows:
"These perfunctory exchanges of compliments between the
solicitor and the examiner occupied the entire time from June 9,
1882, to March 16, 1888, five years nine months and seven days. In
all that time, not a demand for action, not a hint
Page 167 U. S. 254
even of dissatisfaction, appears in the record. We have quoted
it all. Of course, this appearance of willing acquiescence is not
conclusive. The examiner's letters indicate an obstacle in the way;
some portending interference or interferences, always coming, yet
never arriving. But the supine submission of the company to such
extraordinary delay, for such a cause, is the first item of the
proof. If it had been possessed of a real purpose to have its
patent as soon as possible, if it had been losing millions per
annum for want of it, as the people are losing millions because of
it, would it not have found some way to force this invisible foe
into the field, or at least leave on the record some trace of its
mighty effort to burst the bands of official routine which
prevented it from finding and fighting him?"
This presents the burden of the case on the part of the
government. It amounts to only this: the defendant company was not
active, but passive. If millions were to be added to its profit by
active effort, it would have been importunate, and have secured
this patent long before it did. As millions came to it by reason of
its being passive, it ought to suffer for its omission to be
importunate. It must keep coming before the commissioner, like the
widow before the unjust judge in the parable, until it compels the
declaration, "though I fear not God nor regard man, yet, because
this widow troubleth me, I will avenge her, lest by her continual
coming she weary me." But is this the rule to measure the conduct
of those who apply for official action? What is the amount of the
importunity which will afford protection to the grant finally
obtained? How frequent must the demand be? It is easy to say that
the applications of this defendant, coming only at the interval of
months and years, were, taken with the replies of the Patent
Office, mere "perfunctory exchanges of compliments," but this does
not change the fact that action was asked and repeatedly asked;
that no request was made for delay; no intimation that it was
desired or would be acceptable.
In this connection may well be noticed the letter of the
solicitor, in March, 1881, to the commissioner, in which he urged
the modification of rule No. 94 in respect to interferences,
Page 167 U. S. 255
and this in order to hasten the issue of the patent. In this
letter, besides pointing out how the rule as it then existed would
tend to delay, he adds these statements:
"So far as my client is concerned, I have to submit that it is
of the utmost importance that the interference be declared
forthwith. . . ."
"The indefinite suspension of the interference would only create
harassing and oppressive claims after the public had become
possessed of the invention without hindrance or objection on the
part of the inventor, and it is but just to say that neither of the
interfering applicants could with any degree of propriety claim to
be the inventor and expect that such notice on his part would be
treated by the public with any degree of respect. Patents issued as
the result of long pending interferences are always looked upon as
odious monopolies because of the manner in which they are enforced
at the time when the public were already possessed of the
invention. . . ."
". . . An early decision upon the question submitted is
earnestly requested."
It may be added that the modification was made in October,
1881.
In respect to this letter, and especially the second paragraph,
quoted above, counsel for the government say:
"In the argument below, counsel appeared to think that once was
enough, and that they stood as a perpetual exhortation to duty to
the examiner and all his successors as though they had been nailed
on his office door. But they were not even in the file of the
Berliner case. Examiner Freeman, whose report was endorsed on the
letter, went out of office in 1883. If anyone ever saw it after
that, until it was exhumed for the purpose of this case, the fact
does not appear in the record."
But is the applicant to be condemned because, having once made
an urgent request for action and pointed out reasons therefor, it
was not continually repeating that request, because it did not see
that such request was placed on the files of this particular
application, or, as intimated in the words of counsel, nailed on
the doors of the Patent Office?
Page 167 U. S. 256
It is, of course, easy to say that these applications, these
suggestions and requests, meant nothing; that they were a mere
blind. But something more than assertion of counsel is necessary to
destroy their significance or to establish collusion between the
applicant and the officials of the department. But the case does
not stand upon the fact that the formal communications from the
solicitor in charge of this application were few in number. While
in every one in which the matter was referred to there was a
request for action, it also appears from the testimony of Messrs.
Freeman, Lyons, and Kintner, who were the examiners in charge
during the major portion of the time in dispute, that the
representatives of the Bell Company were urgent in pushing the
Berliner application. For instance, Examiner Lyons testified:
"They were urgent and persistent beyond toleration. Hardly a day
passed without somebody representing the interests of the Bell
Telephone Company coming to our room and urging the allowance of
the Berliner case, or the declaration of interferences. I myself
was waylaid in the halls of the Patent Office, and on more than one
occasion did I sneak into the room to avoid being bored by Mr.
Charlie Hedrick, the assistant of Mr. Pollok. Mr. Pollok himself,
also, although less frequently, came to the room, and later on,
notably towards the end of 1884, and in the spring and summer of
1885, Mr. W. W. Swan was a frequent visitor in the electrical
division."
And Examiner Kintner (who was in office from May, 1883, to
April, 1887), in reply to a question as to what Mr. Swan, one of
the representatives of the telephone company, did in respect to the
application, said:
"I had a great many interviews with him in the matter of both
the Edison and the Berliner applications under consideration, and
he was very persistent in urging the passage of both applications
to patent -- in fact, to such an extent that his persistency
annoyed me not a little."
Another matter referred to by counsel is what they call the
"tacit understanding." The facts are these: one Daniel Drawbaugh
claimed to have invented the telephone prior to
Page 167 U. S. 257
Bell. He assigned his inventions to the People's Telephone
Company, between whom and the defendant company a heated and
protracted litigation arose. Now it is said that there was an
agreement, or at least, a tacit understanding, between the
officials of the Patent Office, the People's Company, and the
defendant company that the proceedings in the Patent Office in
respect to the Berliner application should wait the determination
of the litigation between the two telephone companies. It is
insisted that the officials had no right to enter into such an
agreement; that it was unlawful in its character. Assuming that
this is so, still the fact appears that the proposition therefor
came from the representatives of the Drawbaugh interest, that it
was deemed by the officers of the Patent Office to be for the best
interests of all, and that it was simply assented to by the
defendant. Nowhere does it appear that the defendant urged, or even
suggested, the propriety of such a delay. For the present, we do
not consider the wisdom or the rightfulness of the course pursued.
All that we desire to notice is that it was not at the instance of
the defendant.
It is further said that even if there were at first any excuse
for such "tacit understanding," and the Patent Office properly
delayed action on this application until after the litigation
between Drawbaugh and Bell had ended, a judgment therein was
rendered in the circuit court in 1884, and that then the office
should have proceeded promptly, and that there was no excuse for
waiting until the decision of the appeal by this Court in 1888;
and, least of all, for any delay after that final decision by this
Court.
Summing up their argument on this branch of the case, counsel
say:
"The review of the history of the Berliner application, which we
have now completed, shows that in its treatment of it the office
proceeded upon two unlawful assumptions."
"The first was that an applicant whose application is ready for
issue except for a possible threatened interference must wait until
the antagonizing application is either found allowable and ready
for the interference or finally ejected from
Page 167 U. S. 258
the office, no matter how long that may be. This assumption
governed the action of the examiners from 1882 to the issue of the
patent. . . ."
"The second assumption was that the judicial determination of
the question of Drawbaugh's invention, in the suit between the
owners of the applications, was not enough to warrant action by the
office. Examiner Kintner took the ground, in conversation with Mr.
Swan -- never on the record -- that the decision of the circuit
court was not enough for him; that the case might be appealed, and
he would act only on the decision of the Supreme Court. But when
that came, it received no more consideration than had been given to
that of the circuit court."
Were it conceded that these two assumptions were "false
assumptions," as counsel call them, what are they but errors of
judgment on the part of the patent officials as to the course of
procedure, and can it be possible that an applicant for a right,
who has under the statute no choice of tribunals or course of
procedure, but is compelled to apply to one tribunal which has
exclusive jurisdiction in the matter, and must abide by its rulings
as to procedure, can be held to have forfeited his right simply
because of errors of judgment by such tribunal as to the procedure?
The statement of the question seems to us to carry its own answer.
It is true counsel follow this declaration of the errors on the
part of the office in the matter of procedure with the further
statement:
"The guilty party is the Bell Company. It had a full and perfect
inside view of the whole situation from the beginning. Its
attorneys were wiser in these things than the commissioners or the
examiners. They shrewdly availed themselves of every unauthorized
usage, mistaken assumption, ignorant misconception, or supposed
obstacle, by means of which the issue of the patent could be
delayed without apparent responsibility on their part. In view of
the duty which vested upon the company to speed the application,
that was fraud, not less but more reprehensible because it was not
of the common and gross kind, but so refined and acute that its
garb of professed innocence has deceived even the court of appeals.
"
Page 167 U. S. 259
The difficulty with this charge of wrong is that it is not
proved. It assumes the existence of a knowledge which no one had;
of an intention which is not shown. It treats every written
communication from the solicitor in charge of the application
calling for action as a pretense, and all the oral and urgent
appeals for promptness as in fact mere invitations to delay. It not
only rejects the testimony which is given, both oral and written,
as false, but asks that it be held to prove just the reverse.
Indeed, the case which the counsel present to us may be summed
up in these words: the application for this patent was duly filed.
The Patent Office, after the filing, had full jurisdiction over the
procedure; the applicant had no control over its action. We have
been unable to offer a syllable of testimony tending to show that
the applicant ever in any way corrupted, or attempted to corrupt,
any of the officials of the department. We have been unable to show
that any delay or postponement was made at the instance or on the
suggestion of the applicant. Every communication that it made
during those years carried with it a request for action, yet
because the delay has resulted in enlarged profits to the
applicant, and the fact that it would so result ought to have been
known to it, it must be assumed that in some way it did cause the
delay, and, having so caused the delay, ought to suffer therefor.
There is seldom presented a case in which there is such an absolute
and total failure of proof of wrong.
The defendant company might safely have left the case here, but
it has not been content to rest the controversy with the failure on
the part of the government to show any wrong. It has not been
content to accept the Scotch verdict of "not proven." It has called
as witnesses the examiners who were in charge of this application,
and taken their testimony as to what did in fact take place, and as
to how and why the long delay occurred. Whatever judgment may be
pronounced upon the wisdom of the course pursued by these
officials, or the sufficiency of the reasons given by them
therefor, there is no ground for controverting that they acted in
good faith. The case is not one of arbitrary, peremptory
postponements and delay.
Page 167 U. S. 260
They supposed they were acting in compliance with the rules of
the Patent Office, and out of proper regard for the rights of
conflicting interests. No just estimate can be placed upon the
propriety of their conduct without taking into consideration the
whole subject of telephonic inventions and litigation. As
heretofore stated, and as is well known, Bell claimed to be the
pioneer in this matter of telephonic communication. His claim was
disputed, and out of that dispute came the most important, the most
protracted, litigation which has arisen under the patent system in
this country. For years, this litigation was pending in the trial
courts, subsequently brought to this Court, and finally decided in
1888. So great was this litigation, so immense the volume of
testimony, and so important the rights involved, that it is the
only case in the history of this Court to which an entire volume of
our Reports is devoted.
126 U. S. 126 U.S.
The argument was protracted through weeks, and the case was held
under consideration for a year, and finally decided by a closely
divided Court. Is it strange that when the primary right was being
so vigorously contested, and was so much a matter of doubt, when
(as appears from the testimony in this case) the judgment of the
law department of the government was adverse to the claims of Bell,
and to the validity of the patent which he had obtained -- is it
strange, we ask, in view of these facts, that the disposition of
the apparently minor matter should be held in abeyance in the
Patent Office until a final decision of the primary right?
Neither can any just estimate be placed upon their conduct
without taking into account the volume of business, and the
pressure on account thereof, in the Patent Office. Beyond the fact,
which is a matter of common knowledge, that thousands of
applications are filed and thousands of patents granted each year,
the record discloses something as to the multitude of applications
for patents for telephones and telephonic devices which were
pending during these years. Mr. Townsend, who was an examiner up to
November 15, 1880, while unable to state the number of
applications, was able to say that he had examined over 120 that
went to
Page 167 U. S. 261
patent. This it will be remembered was in the early days of
telephonic investigation and invention. It appears also from a
communication made by the Commissioner of Patents to the Secretary
of the Interior, on December 13, 1892, advising against this suit,
that at that time a gentleman, who is called in the letter the
"relator," had pending in the Patent Office 152 applications for
patents on telephones and telephone systems. These facts may be
only sidelights, but they show that the examiners and other
officials in the Patent Office had something else to do besides
considering this application.
Of course, it is easy to say that the Patent Office could have
disposed of this application more promptly than it did; that it
ought to have done so, and that, in view of the termination of the
great litigation favorable to the claims of Bell, its delay has
resulted in large pecuniary benefits to the defendants. But a
wisdom born after the event is the cheapest of all wisdom. Anybody
could have discovered America after 1492. The question is not
whether a better judgment on the part of the patent officials would
have disposed of this application long before it was -- is not,
indeed, whether there was any error of judgment -- but whether they
acted wrongfully, and their action was induced by or at the
instance of the defendants.
One thing more deserves notice. The argument of the counsel for
the government proceeds all along on the assumption of the superior
knowledge of the representatives of the defendant company; that
they saw the end from the beginning; that they knew that their
client had an invention which was patentable, and that they would
ultimately obtain a patent therefor, and also that Bell was and
would finally be adjudged the primary inventor of the telephone,
and that, possessed of all of this knowledge, they planned the
delay in securing the Berliner patent in order that thereby they
might extend to the termination of its life the telephone monopoly.
But what an assumption this is, and how illy justified by the
facts. The very process and termination of the Bell-Drawbaugh
litigation demonstrates the doubtfulness of the question there in
issue, and is absolute evidence that there, was up to the close
Page 167 U. S. 262
of that litigation, an uncertainty as to the result. Equally
uncertain was the outcome of the Berliner application. Indeed,
there is an uncertainty as to every application. No one can
foretell what will be the judgment of the Patent Office upon the
questions of novelty and utility. And in respect to this Berliner
application, the matters which are subsequently to be considered
attest that there was more than ordinary doubt as to the outcome.
On account of those matters, it is earnestly contended that there
was no merit in the application, and that it ought to have been
denied. Further than that, they knew that the officials of the
Patent Office were subject to change -- as in fact they were
changed during the pendency of these proceedings -- and, even if
they had any direct intimations from the first examiner or the
first commissioner, there was no certainty that a subsequent
examiner and subsequent commissioner would entertain the same
views. If the Bell-Drawbaugh litigation had terminated the other
way, and a different opinion on the part of a single member of this
Court would have changed this result, or if when the time came, the
commissioner of the Patent Office had decided against the Berliner
application, and his decision been sustained on appeal to the
Supreme Court of the District of Columbia, then all this brilliant
scheme of realizing millions would have vanished into thin air. If
they were possessed of the wisdom which the government attributes
to them, the representatives of the Bell Company must have realized
that the certainty which attends a final decision and the issue of
a patent was something worth striving for, and not lightly to be
ignored. And if this underlying assumption has so little
foundation, what shall be said of an inference and an imputation
unsupported by evidence and based upon that assumption?
Our conclusions on this branch of the case are: first, that
before the government is entitled to a decree cancelling a patent
for an invention on the ground that it has been fraudulently and
wrongfully obtained, it must, as in the case of a like suit to set
aside a patent for land, establish the fraud and the wrong by
testimony which is clear, convincing, and satisfactory. Second,
that Congress has established a department,
Page 167 U. S. 263
with officials selected by the government, to whom all
applications for patents must be made; has prescribed the terms and
conditions of such applications, and entrusted the entire
management of affairs of the department to those officials; that,
when an applicant for a patent complies with the terms and
conditions prescribed, and files his application with the officers
of the department, he must abide their action, and cannot be held
to suffer or lose rights by reason of any delay on the part of
those officials, whether reasonable or unreasonable, unless such
delay has been brought about through his corruption of the
officials, or through his inducement, or at his instance. Proof
that they were in fault, that they acted unwisely, unreasonably,
and even that they were culpably dilatory, casts no blame on him
and abridges none of his rights. Third, the evidence in this case
does not in the least degree tend to show any corruption by the
applicant of any of the officials of the department, or any undue
or improper influence exerted or attempted to be exerted by it upon
them, and, on the other hand, does affirmatively show that it urged
promptness on the part of the officials of the department, and that
the delay was the result of the actions of those officials. And,
fourth, if the circumstances do not make it clear that this delay
on the part of the officials was wholly justified, they do show
that it was not wholly unwarranted, and that there were reasons for
the action such officials which at least deserve consideration, and
cannot be condemned as trivial.
The three remaining grounds of relief asserted by the government
may be considered together. Defendants contend that as the last
two, although urged in the circuit court, were not presented to the
court of appeals (referring for this fact to the opinion of the
latter court, and also a notice which was contained in the brief of
counsel for the government), we are precluded from noticing them,
citing as authority
Bell v. Bruen,
1 How. 169;
Alviso v. United
States, 8 Wall. 337;
National
Bank v. Commonwealth, 9 Wall. 353;
Rogers v.
Ritter, 12 Wall. 317;
Klein v.
Russell, 19 Wall. 433;
Supervisors v. Lackawana
Iron & Coal Co., 96 U. S. 619;
Wilson v. McNamee, 102 U. S. 572;
Wood v. Weimar, 104 U. S. 786;
Toplitz
Page 167 U. S. 264
v. Toplitz, 145 U. S. 156;
McGahan v. Bank of Roundout, 156 U.
S. 218, and
Carr v. Fife, 156 U.
S. 494 -- in which cases, with more or less
particularity, the proposition is announced that this Court will
not consider questions not presented to and passed upon by the
lower court. We deem it unnecessary to determine how far that rule
is applicable in this case, for the reasons which compel us to deny
relief on the first of these grounds are, when applied to the facts
developed by the testimony, equally potent as to the others. That
ground, as stated, is
"that a patent issued November 2, 1880, upon a division of the
original application, covers the same invention as that covered by
the patent in suit, and exhausted the power of the commissioner as
to that invention."
The patent of 1880 is for a receiver; that of 1891 for a
transmitter. It is claimed that the two instruments are alike in
form and alike in function, save as they are operated at different
ends of the telephone wire. The transmitter can be placed at the
other end of the wire, and then becomes a receiver, and so
vice
versa. Popularly speaking, it may be said that the transmitter
takes the varying sounds of the human voice, and passes them on to
the telephone wire, to be borne along thereon by the undulatory
electric current until they reach the receiver, which takes and
passes them to the human ear. In a sense, the receiver is also a
transmitter, for it passes the sounds from the wire to the ear. We
agree with the court of appeals that it is unnecessary to determine
whether there are two separate inventions in the transmitter and
the receiver, or whether the patent of 1891 is for an invention
which was covered by the patent of 1880. The judgment of the Patent
Office, the tribunal established by Congress to determine such
questions, was adverse to the contention of the government, and
such judgment cannot be reviewed in this suit.
Suits may be maintained by the government in its own courts to
set aside one of its patents not only when it has a proprietary and
pecuniary interest in the result, but also when it is necessary in
order to enable it to discharge its obligations to the public, and
sometimes when the purpose and effect are simply to enforce the
rights of an individual. In
Page 167 U. S. 265
the former cases, it has all the privileges and rights of a
sovereign. The statutes of limitation do not run against it. The
laches of its own officials does not debar its right.
Van
Brocklin v. Tennessee, 117 U. S. 151;
United States v. Nashville, Chattanooga &c. Railway,
118 U. S. 120;
United States v. Inseley, 130 U.
S. 263. But when it has no proprietary or pecuniary
result in the setting aside of the patent, is not seeking to
discharge its obligations to the public, when it has brought the
suit simply to help an individual, making itself, as it were, the
instrument by which the right of that individual against the
patentee can be established -- then it becomes subject to the rules
governing like suits between private litigants. A s said in
United States v. Beebe, 127 U. S. 338,
127 U. S.
347:
"We are of the opinion that when the government is a mere formal
complainant in a suit, not for the purpose of asserting any public
right or protecting any public interest, title, or property, but
merely to form a conduit through which one private person can
conduct litigation against another private person, a court of
equity will not be restrained from administering the equities
existing between the real parties by any exemption of the
government designed for the protection of the rights of the United
States alone. The mere use of its name in a suit for the benefit of
a private suitor cannot extend its immunity as a sovereign
government to said private suitor, whereby he can avoid and escape
the scrutiny of a court of equity into the matters pleaded against
him by the other party, nor stop the court from examining into and
deciding the case according to the principles governing courts of
equity in like cases between private litigants."
See also United States v. Des Moines Navigation &
Railway Co., 142 U. S. 510;
Curtner v. United States, 149 U.
S. 662.
Now in the case at bar the United States has no proprietary or
pecuniary interest. The result, if favorable to it, would put no
money in its treasury or property in its possession. It has a
standing in court either in the discharge of its obligation to
protect the public against a monopoly it has wrongfully created or
simply because it owes a duty to other patentees to secure to them
the full enjoyment of the rights which it
Page 167 U. S. 266
has conferred by its patents to them. Perhaps both of these
objects were in view. Insofar as the latter was and is the purpose
of this suit, it brings it within the rule laid down in
United
States v. Beebe, supra. Doubtless the removal from the public
of the burden of a monopoly charged to have been wrongfully created
was also one of the objects, and perhaps the principal object.
United States v. American Bell Telephone Co., 159 U.
S. 548. To what extent this may relieve the government
as suitor from all the rules governing the suits of private
individuals need not be specifically determined here.
One of the familiar rules of equity, reinforced by statute (§
723, Rev.Stat.), is that "suits in equity shall not be sustained in
either of the courts of the United States in any case where a
plain, adequate, and complete remedy may be had at law." The
objection to the validity of this patent on the ground that it was
already covered by the patent of 1880 is a defense which, under the
statutes (§ 4920, Rev.Stat.), is open to every individual charged
by the patentee with infringement, whether the proceeding against
him be an action at law or a suit in equity. The government,
therefore, if seeking simply to protect the right of an individual,
ought not to be permitted to maintain a suit in equity to cancel
that against which the individual has a perfect legal defense
available in any action brought by or against him. The query is
pressed whether the same rule would not also apply when the
government is only seeking to protect the public at large, for the
public is but the aggregation of all the individuals, and, if each
of them has a perfect defense to the patent, so all together have.
Again, and as an illustration, perhaps, of the extent of the rule
referred to, it has often been held that, while one having the
title to and possession of a tract of land can maintain a suit in
equity to cancel a deed or other instrument which is a cloud upon
the title, such suit cannot be sustained if the deed or instrument
is void upon its face, its invalidity resting upon matters of
record, and not affected by any lapse of time or statute of
limitations. In other words, the deed or instrument is not
considered a
Page 167 U. S. 267
cloud if it can never be used to destroy his title or disturb
his possession. The objection to this patent on the ground stated
is an objection resting upon matters of record -- of record in the
Patent Office -- not dependent on oral testimony nor subject to
change, and in no way affected by lapse of time. Within the scope
of this specific application of the general rule, it would seem
that equity has no jurisdiction either at the suit of the
government or of an individual to formally cancel that which by
record and unfailing evidence is, as claimed, absolutely void.
But further, Congress has established the Patent Office, and
thereby created a tribunal to pass upon all questions of novelty
and utility. It has given to that office exclusive jurisdiction in
the first instance, and has specifically provided under what
circumstances its decisions may be reviewed, either collaterally or
by appeal. As said in
Butterworth v. Hoe, 112 U. S.
50,
112 U. S.
67:
"That it was intended that the Commissioner of Patents, in
issuing or withholding patents, in reissues, interferences, and
extensions, should exercise
quasi-judicial functions, is
apparent from the nature of the examinations and decisions he is
required to make, and the modes provided by law, according to
which, exclusively, they may be reviewed."
Sections 4911 to 4914, Rev.Stat., grant appeals in certain cases
to the Supreme Court of the District of Columbia. It is true those
sections do not authorize appeals on behalf of the government, but
the failure so to do may be evidence that Congress thought the
government ought not to interfere, and because it believed it had
made ample provision for securing the rights of all without the
intervention of the government. Section 4915, Rev.Stat., authorizes
a suit in equity on behalf of an applicant for a patent whose
application has been refused.
Morgan v. Daniels,
153 U. S. 120,
presented a controversy under that section, and in the opinion, on
page
153 U. S. 124,
we said:
"It is a controversy between two individuals over a question of
fact which has once been settled by a special tribunal, entrusted
with full power in the premises. As such, it might be well argued,
were it not for the terms of this
Page 167 U. S. 268
statute, that the decision of the Patent Office was a finality
upon every matter of fact."
It is true that all these sections refer to proceedings between
individuals, but the government is as much bound by the laws of
Congress as an individual, and when Congress has created a tribunal
to which it has given exclusive determination in the first instance
of certain questions of fact, and has specifically provided under
what circumstances that determination may be reviewed by the
courts, the argument is a forcible one that such determination
should be held conclusive upon the government, subject to the same
limitations as apply in suits between individuals.
There is nothing in
United States v. Bell Telephone
Company, 128 U. S. 315, and
United States v. American Bell Telephone Company,
159 U. S. 548, to
conflict with the views above expressed. In the former case, the
question presented was whether the government could maintain a bill
to set aside a patent for an invention on the ground of fraud in
its issue, and among the objections urged was the fact that
Congress had, in § 4920, Rev.Stat., made specific provision for
certain defenses in suits by an infringer. It was held that the
government could maintain such a bill, and that these special
statutory provisions did not defeat its right, the Court summing up
the discussion in these words (p.
128 U. S.
373):
"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."
In the latter case, which is the one now before us, there
Page 167 U. S. 269
was decided a motion to dismiss for want of jurisdiction in this
Court of an appeal from the decision of the court of appeals, and
it was adjudged that this Court had jurisdiction. It is true at the
close of the opinion is found this general statement as to the
power to maintain such a suit (p.
159 U. S.
555):
"In
United States v. American Bell Tel. Co., supra, it
was decided that where a patent for a grant of any kind issued by
the United States has been obtained by fraud, by mistake, or by
accident, a suit by the United States against the patentee is the
proper remedy for relief, and that in this country, where there is
no kingly prerogative, but where patents for land 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 appropriate remedy is by proceedings by
the United States against the patentee."
But while there was thus rightfully affirmed the power of the
government to proceed by suit in equity against one who had
wrongfully obtained a patent for land or for an invention, there
was no attempt to define the character of the fraud, or deceit, or
mistake, or the extent of the error as to power which must be
established before a decree could be entered cancelling the patent.
It was not affirmed that proof of any fraud, or deceit, or the
existence of any error on the part of the officers as to the extent
of their power, or that any mistake in the instrument, was
sufficient to justify a decree of cancellation. Least of all was it
intended to be affirmed that the courts of the United States,
sitting as courts of equity, could entertain jurisdiction of a suit
by the United States to set aside a patent for an invention on the
mere ground of error of judgment on the part of the patent
officials. That would be an attempt on the part of the courts in
collateral attack to exercise an appellate jurisdiction over the
decisions of the Patent Office, although no appellate jurisdiction
has been by the statutes conferred. We are of opinion, therefore,
that the question, as stated, is not open for consideration in
Page 167 U. S. 270
this case. We see no error in the decision of the court of
appeals, and its decree, dismissing the bill, is
Affirmed.
MR. JUSTICE HARLAN dissented.
MR. JUSTICE GRAY and MR. JUSTICE BROWN were not present at the
argument, and took no part in the decision.