United States v. American Bell Tel. Co., 167 U.S. 224 (1897)
United States v. American Bell Telephone Company
No. 344
Argued November 9-11, 1896
Decided May 10, 1897
167 U.S. 224
APPEAL FROM THE COURT OF
APPEALS FOR THE FIRST CIRCUIT
Syllabus
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. 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 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 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.